- Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 17, 2023 · IPR2023-00344 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’868 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the 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 grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv . . . 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.”).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under the specific facts of this case, we agree with Petitioner’s emphasis on the combined teachings of Anthony and Hanggie in Petitioner’s challenges to the claims of the ’868 patent. To paraphrase an expression, this is one case where the combination of the teachings of the prior art is greater than the sum of its parts. As discussed below in Section III.F.3, Petitioner’s proposed combination of Anthony and Hanggie is fundamental to Petitioner’s theory of obviousness, relying on the combined teachings of Anthony and Hanggie in nearly all elements of the challenged claims. Thus, 5 U.S. Patent Application Publication No. 2002/0033848 A1 (Ex. 2009, “Sciammarella”). 6 U.S. Patent No. 6,725,427 B2 (Ex. 2007, “Freeman”). 7 U.S. Patent No. 6,768,999 B2 (Ex. 2008, “Prager”). 8 U.S. Patent Application Publication No. 2003/0179231 A1 (Ex. 2011, “Kamiwada”). 9 U.S. Patent Application Publication No. 2001/0050687 A1 (Ex. 2010, “Iida”). we find that our § 325(d) inquiry in this case must consider the combination of Anthony and Hanggie to meaningfully evaluate the Becton, Dickinson factors under the Advanced Bionics framework. During the prosecution of the ’868 patent (or the ’708 application that led to the ’868 patent), the Examiner did not reject any claims but instead allowed the claims as filed in the applicant’s preliminary amendment. See Ex. 1002, 27–29, 50–66, 68–80. In view of this record, although the ’868 patent lists on its face a number of prior art references cited by the Examiner, we agree with Petitioner that no combination of prior art substantially similar to the asserted combination of Anthony and Hanggie was considered during the prosecution of the ’868 patent.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘868 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’868 patent, the types of problems and solutions described in the ’868 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,696,868 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 6, 2023 · IPR2023-00343 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1–5, 7, 8, 10–13, 15–17, and 19 are obvious over Anthony and Hanggie, and claims 6, 9, 14, and 18 over Anthony, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’654 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis of discretionary denial under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the 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 grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“the PTAB will not deny institution of an IPR or PGR under Fintiv . . . 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.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“were presented to the Office.” The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework, i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics at 10. Factors (c), (e), and (f) relate to the second part of that framework, i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Fuchs, Petitioner asserts that a person of ordinary skill in the art (“POSITA”) as of September 13, 2005 (the earliest possible priority date of the ’654 patent) would have had “at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with 2D and 3D graphical user interfaces.” Pet. 10 (citing Ex. 1003 ¶¶ 31–32). Petitioner further states that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 31– 32). Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘654 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,304,654 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jun 16, 2023 · IPR2023-00242 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds after finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“However, if Petitioner has provided a Sotera4 stipulation, we will not discretionarily deny institution under § 314(a) in view of a District Court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director Memo”), at 3, 7, 9.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (whether the same or substantially the same art or arguments previously were presented to the Office), and Becton, Dickinson factors (c), (e), and (f) relate to the second part of that framework (previous Office error). Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the current record, Petitioner’s contentions, detailed above and supported by the Fuchs Decl., are sufficient to show that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–18 under Grounds I and II. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–18 of the ’048 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’048 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–18 of the ’048 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 55
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: The range of qualifications for a POSITA [person of ordinary skill in the art] would have included a bachelor’s degree in computer science or a comparable field and at least two years of professional experience working with 2D and 3D graphical user interfaces. Additional years of experience could substitute for an advanced-level degree (and vice versa). Pet. 13 (citing Fuchs Decl. ¶¶ 28–29) (citations omitted). Patent Owner states that “at least the inventor of the ’048 Patent, E. Eddie Bakhash, is a 6 We recognize that “the strength of each of the Graham factors must be weighed in every case and must be weighted en route to the final determination of obviousness or non-obviousness.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). This includes objective indicia of nonobviousness. To that end, we evaluate Patent Owner’s objective indicia in Section II.I below, and find that evidence unpersuasive on the preliminary record. POSITA, and reserves the right to further address this issue at a later point in time if necessary.” Prelim. Resp. 18–19. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,881,048 - PTAB · Jun 8, 2023 · IPR2023-00232 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted IPR on claims 1–28 on all petition grounds, finding a reasonable likelihood that claim 1 is obvious over Woycik, and granted Clover’s motion to join IPR2022-00779.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 39–53.7 Indeed, based on the record before us, we do not see any less disclosure in Woycik regarding its administration tool than that disclosed in the ’640 patent for its point of sale builder software.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office regarding discretionary denials5 requires that “the 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 grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3. In this proceeding, Petitioner stipulates that “if this IPR is instituted and Fintiv[6] remains precedential at the time of institution, [Petitioner] stipulates not to pursue in the district court any ground raised or that could have reasonably been raised in IPR (i.e., under §§ 102 or 103 based on prior art patents or printed publications alone).” Paper 14, 2. Moreover, any timing issues or inefficiencies are moot in view of our decision on Petitioner’s Joinder Motion. Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner represents that the current Petition and that from the 779 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant than the one used in the 779 IPR, there is no briefing remaining for the petitioner in the 779 IPR, as Petitioner’s Reply in that proceeding was entered on May 10, 2023. See IPR2022-00779, Paper 20. Moreover, Petitioner agrees to use the declarant from the 779 IPR if joinder is granted. See Paper 14, 2; Ex. 1033, 11:8–15:24; Ex. 1034, 16:13–17:7. Given the advanced stage of the 779 IPR proceeding, if Petitioner is joined as a party to the 779 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 779 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 779 IPR. Paper 8, 6–13. But those concerns are unfounded, particularly in view of the advanced stage of the 779 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 779 IPR. See, e.g., Ex. 1033, 18:2–20. We see no increase in complexity and costs, or any schedule delay in the 779 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 779 IPR.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“(POSITA) at the time of the effective filing date of the ’640 patent would have been someone with a working knowledge of designing and developing web-based software and systems” and “would have a Bachelor of Science in computer science or a related field, and approximately two years of professional experience or equivalent study in the design and development of web-based software and systems, including web-based POS systems.” Pet. 8. Petitioner contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner responds: “Petitioner’s proposed definition of a POSITA does not require any experience with retail POS systems—let alone building POS screens—that are the field of the ’640 Patent.” Prelim. Resp. 10. According to Patent Owner, “Petitioner’s proposed definition of a POSITA makes experience in retail POS systems optional.” Id. at 11. Patent Owner contends that its “proposed definition of a POSITA remedies this deficiency by including experience or equivalent study in the field of the 4 Our discussion below focuses on claim 1. ’640 Patent, retail point of sale (“POS”) systems, including experience with building POS screens.” Id. We fail to see how the alleged differences in the level of ordinary skill in the art advanced by Patent Owner affects our decision to institute in this proceeding. Accordingly, for purposes of this decision, we apply the level of skill set forth by Patent Owner.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,400,640 - PTAB · Jun 8, 2023 · IPR2023-00288 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted review of claims 1–20 on all petition grounds and joined Clover Network, LLC as a petitioner in IPR2022-00997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 30–46.7 Indeed, based on the record before us, we do not see any less disclosure in Woycik regarding its administration tool than that disclosed in the ’012 patent for its point of sale builder software.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The recent guidance from the Director of the United States Patent and Trademark Office regarding discretionary denials5 requires that “the 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 grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3. 5 USPTO, Memorandum on Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_ aia_parallel_district_court_litigation_memo_20220621_.pdf (“Guidance Memo”). and Fintiv[6] remains precedential at the time of institution, [Petitioner] stipulates not to pursue in the district court any ground raised or that could have reasonably been raised in IPR (i.e., under §§102 or 103 based on prior art patents or printed publications alone).” Paper 14, 2. Moreover, any timing issues or inefficiencies are moot in view of our decision on Petitioner’s Joinder Motion. Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 997 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 997 IPR, there is no briefing remaining for the petitioner in the 997 IPR, as Petitioner’s Reply in that proceeding was entered on May 12, 2023. See IPR2022-00997, Paper 19. Moreover, Petitioner agrees to use the declarant from the 997 IPR if joinder is granted. See Paper 14, 2; Ex. 1037, 11:8–15:24; Ex. 1038, 16:13–17:7. Given the advanced stage of the 997 IPR proceeding, if Petitioner is joined as a party to the 997 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 997 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 997 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 997 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 997 IPR. See, e.g., Ex. 1037, 18:2–20. We see no increase in complexity and costs, or any schedule delay in the 997 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 997 IPR.” slip op. at 14
- Skill levelSkill level patent owner adoptedDecided for patent owner
“POSITA does not require any experience with retail POS systems—let alone building POS screens—that are the field of the ’012 Patent.” Prelim. Resp. 10. According to Patent Owner, “Petitioner’s proposed definition of a POSITA makes experience in retail POS systems optional.” Id. Patent Owner contends that its “proposed definition of a POSITA remedies this deficiency by including experience or equivalent study in the field of the ’012 Patent, retail point of sale (“POS”) systems, including experience with building POS screens.” Id. We fail to see how the alleged differences in the level of ordinary skill in the art advanced by Patent Owner affects our decision to institute in this proceeding. Accordingly, for purposes of this decision, we apply the level of skill set forth by Patent Owner.” slip op. at 6
Claim constructionDiscretionary denialPatents in suitUS 10,083,012 - PTAB · Jun 8, 2023 · IPR2023-00287 · APJ Jeremy M Plenzler · IPR · Institution
The Board instituted IPR on claims 1–4, 7–28, and 31–44 on all petition grounds, finding a reasonable likelihood of success on claim 1 over Woycik, and granted Clover’s motion to join IPR2022-01143.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Petitioner’s Challenge Based on Woycik Initially, we note that there does not appear to be any dispute that Woycik’s administration tool would be understood as point of sale builder software by one skilled in the art. Prelim. Resp. 45–64.6 Indeed, based on 6 Patent Owner acknowledges that Woycik’s “administrative tool can ‘perform various administrate functions such as configuring kiosks, creating and editing menus and available food items, and specifying tax and payment features of the system.’” Prelim. Resp. 50 (citing Ex. 1004 ¶ 73). its administration tool than that disclosed in the ’793 patent for its point of sale builder software. Patent Owner presents a number of contentions that do not appear tied to any particular claim requirement. For example, Patent Owner presents contentions regarding the use of a local server in addition to the web server in Woycik, without clearly explaining how those contentions relate to any particular claim requirement. See, e.g., Prelim. Resp. 59–60 (alleging that Woycik’s “local server as the middleman for all communications”). The actual dispute with respect to Woycik’s teachings as related to claim 1, appears to be based on whether Woycik teaches its administration tool running on a web server. Id. at 47–61. We have reviewed Petitioner’s contentions regarding the other limitations recited in claim 1, which Patent Owner does not dispute at this time, and determine that Petitioner has established sufficiently that Woycik teaches those limitations. Our discussion below is directed to the disputed limitations.” slip op. at 12
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Patent Owner’s request has already been considered and determined unpersuasive in the 1143 IPR. Moreover, we also question the merit of simply seeks to have Petitioner joined as a party to an already instituted proceeding where the same art and arguments asserted in this proceeding are already being evaluated in the 1143 IPR. For the reasons explained in the 1143 IPR we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 325(d) to deny the petition in this proceeding. See IPR2022-01143, Paper 8 at 9–12.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Accordingly, we decline Patent Owner’s invitation for us to apply our discretion under 35 U.S.C. § 314(a) to deny the petition.” slip op. at 10
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Section 315(c) “authorizes joinder of a person as a party, not ‘joinder’ of two proceedings” and “does not authorize the joined party to bring new issues from its new proceeding into the existing proceeding.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1335 (Fed. Cir. 2020). Here, Petitioner’s Motion requests no more than the statute allows. Petitioner represents that the current Petition and that from the 1143 IPR are identical in all substantive respects, including “identical grounds, prior art, and analysis.” Mot. 3. And although Petitioner used a different declarant that the one used in the 1143 IPR, there is no briefing remaining for the petitioner in the 1143 IPR, as Petitioner’s Reply in that proceeding was entered on May 16, 2023. See IPR2022-01143, Paper 16. Moreover, Petitioner agrees to use the declarant from the 1143 IPR if joinder is granted. See Paper 14, 2; Ex. 1030, 11:8–15:24; Ex. 1031, 16:13–17:7. Given the advanced stage of the 1143 IPR proceeding, if Petitioner is joined as a party to the 1143 IPR, Petitioner’s only possible remaining role would be to present oral argument or potentially request rehearing or appeal our final written decision in the 1143 IPR if the initial petitioner in that proceeding drops out. Patent Owner opposes the Motion, contending that joinder would increase complexity and costs, as well as delay the schedule of the 1143 IPR. Paper 8, 6–12. But those concerns are unfounded, particularly in view of the advanced stage of the 1143 IPR. Indeed, Patent Owner acknowledges that, at this stage of the proceeding, there is nothing left for Petitioner to deal with as far as briefing or declarant testimony in the 1143 IPR. See, e.g., Ex. 1030, 18:2–20. the 1143 IPR as asserted by Patent Owner. Accordingly, we grant Petitioner’s Motion, and add it as a party to the 1143 IPR.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,226,793 - PTAB · May 23, 2023 · IPR2023-00198 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–19 and all petitioned grounds, finding a reasonable likelihood of success on Ground I’s Burton obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“However, if Petitioner has provided a Sotera4 stipulation, we will not discretionarily deny institution under § 314(a) in view of a District Court Action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director Memo”), at 3, 7, 9. Petitioner argues: the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition (i.e., a “Sotera stipulation”). In that regard, the Petition provided this stipulation: Petitioner[] want to make clear they are consenting to a full Sotera stipulation and Petitioner will not pursue in the parallel district court litigation or other parallel proceedings the same grounds as raised in this Petition or any grounds that Petitioners could have reasonably raised before the PTAB. Petitioners agree to not pursue any of the grounds raised in this Petition, any grounds raised within Petitioners’ invalidity contentions, or any grounds Petitioners could have reasonably raised before the PTAB in the parallel district court litigation or any parallel proceeding.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments are new ones because no arguments during prosecution were presented for a first and second reflector. Therefore, there is no overlap between the arguments made during examination and the manner in which Petitioner relies on Burton, Schuknect, and Baek. Cf. Becton, Dickinson factor (d). Relying on materially-different references not before the Examiner, that is, Burton, Schuknecht, and Baek, Petitioner presents arguments addressing the now-claimed first and second reflector limitations that the Examiner did not examine. See Pet. 21–23 (Burton); 45–48 (Schuknecht); and, 73–75 (Baek). For the reasons discussed related to Becton, Dickinson factors (a), (b), and (d), we find the art and arguments are not the same or substantially the same as was previously presented to the Office. 2. Second step of the framework Because the same or substantially the same art or arguments were not previously presented to the Office, we do not consider whether Petitioner has demonstrated a material error by the Office. See Advanced Bionics, Paper 6 at 9–11.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 6. Upon consideration of the arguments and evidence presented by Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–19 of the ’114 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable
“reasoning Petitioner provides for why the claimed device would have been obvious to one of ordinary skill in the art over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA is insufficient. Obviousness requires showing that a POSITA would have had a motivation to combine Schuknecht, Hsu, Leong, and the knowledge of a POSITA in the way required to achieve the claimed device and would have had a reasonable expectation of success in doing so. PAR Pharmaceutical, Inc. v. TWI Pharmaceuticals, Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (emphasis added). Rather than explaining why one would have included LEDs in Schuknecht’s device with a reasonable expectation of success at arriving at the claimed device, Petitioner explains why a POSITA could have generally substituted fluorescent bulbs for LEDs. Schuknecht is directed to an air flow management specifically designed for vent chambers containing high wattage lamps such as fluorescent lamps. See Ex. 1041 ¶¶ 2 (“The devices presented here are directed to a compact fluorescent lamp (‘CFL’) type lighting fixture that has improved cooling capability.”), 7 (The invention “is primarily, but not exclusively, directed at CFL fixtures where the sum of wattage of all of the lamps in the fixture exceeds 200 watts.”). We agree with Patent Owner that Petitioners do not provide any argument that an optimal temperature of an LED bulb matches that of a CFL fixture. Nor do Petitioners provide any argument that an LED bulb, as disclosed by Hsu, might generate output in excess of 200 watts/fixture, as required by Schuknecht. Prelim. Resp. 38 (citing Ex. 1041 ¶¶ 4–7). Petitioner does not address why a POSITA would have modified Schuknecht’s vent chamber that is specifically designed for managing heat associated with using fluorescent bulbs to manage heat from LEDs, if any, with a reasonable expectation of success in arriving at the claimed illumination device. For that reason, a reasonable likelihood of prevailing in demonstrating that claim 1 is unpatentable under 35 U.S.C. § 103(a) over the combination of Schuknecht, Hsu, Leong, and the knowledge of a POSITA on this record has not been demonstrated.” slip op. at 47
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,721,114 - Google LLC v. Wag Acquisition, L.L.C.InstitutedPTAB · Mar 23, 2023 · IPR2022-01413 · APJ Hubert C Lorin · IPR · Institution
The Board instituted inter partes review of claims 1–12 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the supporting Declaration of Dr. Polish (Ex. 1002), and for the reasons set forth above, we are persuaded that, based on the current record, Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness challenge to claim 1 of the ’636 patent over Carmel.” slip op. at 41
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“proposed for construction by Petitioner.” Pet. 9–10. But it “does not presently contend that any term requires express construction.” Id. at 9. Patent Owner indicates, inter alia, that it “disagrees with the constructions of certain terms Petitioner has proffered.” Prelim. Resp. 15 (citing Pet. 10). According to Patent Owner, “the claim terms are entitled to their plain and ordinary meaning.” Id. However, Patent Owner does not presently contend that any claim term requires express construction. See generally Prelim. Resp. 14–19. We determine that express construction of any term is not required at this stage. To the extent the meaning of any other term requires discussion, we provide it in our analysis of the patentability challenges. In that regard, only those terms that are in controversy need to be construed, and only to the” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successOther
“Petitioner contends, inter alia, that “Ravi . . . teaches transmitting packets of media data from a server to a client computer and selecting a transmission rate to ‘match the…bandwidth capacity of the network connection.’” Pet. 60 (quoting Ex. 1004, 6:43–44). According to Dr. Polish, “[a] person of ordinary skill in the art would understand that Ravi’s system sends data ‘as fast as the data connection…allows.’” Polish Decl. ¶ 231; Pet. 60. If the transmission rate “matches” the capacity of the data connection’s bandwidth, the transmission rate is “as fast as” the data connection allows. If the bandwidth of the data connection increases, Ravi’s servers would increase the transmission rate to “match” the allowable transmission rate. Likewise, if the bandwidth of the data connection decreases, Ravi’s servers would decrease the transmission rate until the rate matches the allowable data rate. Polish Decl. ¶ 231. Petitioner further contends that [i]t would have been obvious for a [person of ordinary skill in the art] to combine Carmel with Ravi, predictably resulting in the media streaming system of Carmel that uses Ravi’s efficient and reliable method of transmitting data slices by matching the transmission rate to the available bandwidth. . . . A [person of ordinary skill in the art] would have known that combining Ravi’s transmission methods with Carmel’s media streaming system would be successful. Pet. 61 (citing Polish Decl. ¶¶ 232–236).” slip op. at 43
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“This argument does not undermine Petitioner’s contention which relies on Ravi teaching transmitting packets of media data at a transmission rate matching the bandwidth of the network connection. See Pet. 59–61. Whether or not the buffer may eventually overflow and data packets will have to be discarded if the selected bandwidth is higher than the average client computation rate, the packets of media data would nevertheless still be transmitted at a transmission rate matching the bandwidth capacity of the network connection as Petitioner contends. Patent Owner also argues that discarding packets when a bandwidth is selected to be higher than the average client computation rate shows Ravi “teaches away” from sending data as fast as the connection will allow. Prelim. Resp. 37 (relying on Ex. 1004, 11:26–29). But again, Petitioner’s contention is that Ravi teaches transmitting packets of media data at a transmission rate matching the bandwidth of the network connection. Whether or not the buffer may eventually overflow and data packets will have to be discarded under certain circumstances, i.e., if the selected bandwidth is higher than the average client computation rate, does not affect Ravi’s teaching of a transmission rate matching the bandwidth of the network connection that Petitioner relies on in support of its contention. We have considered the parties’ positions and at this juncture we are persuaded that the evidence relied upon by Petitioner sufficiently supports Petitioner’s contentions regarding Ravi.” slip op. at 44
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,762,636 - Google LLC v. Wag Acquisition, L.L.C.InstitutedPTAB · Mar 23, 2023 · IPR2022-01412 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–12, finding a reasonable likelihood that Google would prevail on its obviousness challenge over Carmel.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we are persuaded that Petitioner has demonstrated, under 35 U.S.C. § 314(a), a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim. For the reasons stated below, we institute inter partes review as to challenged claims 1–12 of the ’824 patent. B. Related Proceedings” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not dispute [Petitioner’s] characterization of a” person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision. Moreover, Petitioner’s proposed definition appears to be consistent with the level of skill reflected by the prior art of record. 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). C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides a table of “[c]laim terms [which] have been proposed for construction by Petitioner.” Pet. 9–10. But it “does not presently contend that any term requires express construction.” Id. at 9. Patent Owner indicates, inter alia, that it “disagrees with the constructions of certain terms Petitioner has proffered.” Prelim. Resp. 15 (citing Pet. 10). According to Patent Owner, “the claim terms are entitled to their plain and ordinary meaning.” Id. However, Patent Owner does not presently contend that any claim term requires express construction. See generally Prelim. Resp. 14–19. We determine that express construction of any term is not required at this stage. To the extent the meaning of any other term requires discussion, we provide it in our analysis of the patentability challenges. In that regard, only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 11
- BurdenOther
“In an [inter partes review], 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”)). This burden of persuasion does not shift to Patent Owner, except in limited circumstances not present here. See 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). B. Level of Ordinary Skill in the Art slip op. at 10
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,742,824 - Google LLC v. Wag Acquisition, L.L.C.InstitutedPTAB · Mar 10, 2023 · IPR2022-01411 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–17 and all asserted grounds, finding a reasonable likelihood that claims 1–17 are obvious over Hill.
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). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–17 of the ’594 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“computer science or an equivalent field requiring learning computation principles, and two years of work experience in networking or streaming media systems, particularly audio and video, over the Internet.” Pet. 8–9 (citing Ex. 1002 ¶¶ 18–23). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 8. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’594 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner includes a table of “[c]laim terms [that] have been proposed for construction by Petitioner.” Pet. 9–10. These proposed constructions appear to arise from related litigation, though Petitioner provides no citation to the source of the constructions. Notwithstanding, Petitioner states that, “[f]or purposes of this petition, Petitioner does not, at this time, contend that any term requires express construction.” Id. at 9. Patent Owner does not propose any terms for construction. Prelim. Resp. 9. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner cites Ravi’s teaching of dynamically selecting media transmission rates to “match the . . . bandwidth capacity of the network connection.” Id. at 37 (citing Ex. 1004, 6:43–44). Petitioner also provides reasons for combining each of Aharoni and Ravi with Hill. Id. at 37–40. Patent Owner relies on the same arguments it makes against the Hill obviousness ground and contends that Petitioner’s further analysis based on Aharoni or Hill does not cure the alleged deficiencies from the Hill obviousness ground. Prelim. Resp. 17–18. Given that we have found Petitioner’s analysis of the Hill obviousness ground sufficient for institution (see supra § II.D), we also are persuaded preliminarily by Petitioner’s proposal to add further teachings from Aharoni and Ravi in combination with Hill for teaching “a rate as fast as the data connection . . . allows.” We also are persuaded preliminarily by Petitioner’s reasons for combining each of Aharoni and Ravi with Hill. See Pet. 37–40.” slip op. at 24
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,729,594
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.