- Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00072 · APJ Julia Heaney · IPR · Final written decision
Claims 1, 2, 6, 7, 9, 10, 12–19, 23–26, 30, and 32 are unpatentable as obvious over the asserted combinations of prior art.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’806 patent, the types of problems and solutions described in the ’806 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionGranted
“On the fully developed record, we find that Petitioner’s construction, “a layer that adheres,” is more strongly supported by the evidence than Patent Owner’s construction, “a pre-formed layer that is adhered.”” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner shows persuasively that a person of ordinary skill in the art would have had a reasonable expectation of success in combining Mostafazadeh with Ball and Fogal. Pet. 32–33. The evidence discussed above concerning reasons to combine supports a reasonable expectation of success. We are also persuaded by Dr. Suhling’s testimony that the “combination of Ball, Fogal, and Mostafazadeh would require no modification of the multichip modules in Ball and Fogal: rather Mostafazadeh merely explains in more detail methods known in the art for creating chips with adhesive surfaces.” Ex. 1002 ¶ 239; see also id. ¶¶ 62– 69 (describing prior art methods for applying adhesive to the backside of a wafer). For the foregoing reasons, we find that Petitioner has demonstrated that a person of ordinary skill in the art would have had a reasonable expectation of successfully combining Ball, Fogal, and Mostafazadeh.” slip op. at 46
- ExcludeOther
“We do not discuss or cite any of these exhibits in this Decision, or rely on any of them in reaching our determination that all of the challenged claims are unpatentable. Because their presence in the record would not affect our analysis in this Decision, we dismiss as moot Petitioner’s motion with respect to these exhibits.” slip op. at 72
Patent outcomesUS RE38,806 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR - Micron Technology, Inc. v. Katana Silicon Technologies LLCAll claims unpatentablePTAB · May 13, 2024 · IPR2023-00073 · APJ Sheldon M Mcgee · IPR · Final written decision
Claims 1–15 are unpatentable under §103: the Board found the asserted combinations taught the limitations, with motivation to combine and a reasonable expectation of success.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The claim language, “forming” an “adhesion layer on a back surface,” suggests strongly that an “adhesion layer” may be formed in situ on the back surface of a wafer. The testimony of Patent Owner’s expert, Mr. Elenius, supports this interpretation. See Ex. 2014 ¶¶ 43, 50 (testifying that a person of ordinary skill in the art “would recognize that there are multiple methods of forming an ‘adhesion layer’ on the back surface of the semiconductor chip” and that “[p]astes and other adhesives, adhesive agents, adhesive layers or other material that are dispensed onto a substrate or chip back are formed into a layer over time as they harden through curing” (emphasis added)). Thus, the language of the claims of the ʼ879 patent does not support Patent Owner’s construction that the “adhesion layer” must be a preformed layer that is adhered. Cf. PO Resp. 21–23 (arguing for that construction).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Nevertheless, based on our review of the ’879 patent, the types of problems and solutions described in the ’879 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Mostafazadeh, could overflow.” PO Resp. 41, 42 (citing Ex. 2014 ¶ 121). According to Patent Owner, the downward pressure during mounting “could cause adhesive to squeeze out.” Id. at 41. We find that Patent Owner’s argument and the corresponding testimony of Mr. Elenius are speculative and do not outweigh Petitioner’s evidence of obviousness. The overflow issue was recognized and addressed by Mostafazadeh. Contrary to Patent Owner’s argument, Mostafazadeh provides explicitly that its adhesive layer “covers an entire mounting surface 190 of the selected integrated circuit dies 182 and does not extend beyond a boundary of the mounting surface 190.” Ex. 1003, 10:6–9 (emphasis added). Additionally, Mostafazadeh teaches that when “the adhesive layer is rolled on, it is exactly the same size as the mounting surface and is quite even. Thus, when the die is attached to its supporting surface the adhesive does not extend beyond the mounting surface of the die.” Id. at 9:15–18. Further, Mostafazadeh teaches that its process avoids the adhesive jutting around the edges of the die. Id. at 2:26–28. These teachings support that a person of ordinary skill in the art would have had a reasonable expectation of successfully applying Mostafazadeh’s die attachment method to Ball’s multichip device while avoiding adhesive overflow. Next, Patent Owner argues that Petitioner’s combination would fail” slip op. at 40
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“preponderance of the evidence favors Petitioner. Petitioner demonstrates persuasively that a person of ordinary skill in the art would have had reasons to combine Ball’s stacked multichip module using flip-chip and wire bond connections with Mostafazadeh’s process for applying adhesive to create individual chips with adhesive backsides. Pet. 25–28. In particular, Petitioner shows that a person of ordinary skill in the art would have considered Mostafazadeh’s teaching of applying the adhesive to a wafer surface and then subsequently dicing the wafer in order to provide a more efficient manufacturing process for multichip modules and to simplify Ball’s process of stacking chips. Id.; see KSR, 550 U.S. at 417 (stating that the “mere application of a known technique to a piece of prior art ready for the improvement” suggests obviousness). The teachings of both Ball and Mostafazadeh support Petitioner’s” slip op. at 33
Patent outcomesUS 6,352,879 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 6,352,879 - Netflix Inc. v. Divx, LLCAll claims unpatentablePTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand
On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.
RulingsRemand decision- RemandDecided for petitioner
“the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29
Patent outcomesUS 8,472,792 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Netflix, Inc. v. Divx, LLCAll claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Remand
On remand, the Board held claims 1–3, 5, 6, 10–12, 14, and 15 unpatentable as obvious over the asserted combinations of Chen and Grab-333 with Candelore or Kocher.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the United States Court of Appeals for the Federal Circuit to address the patentability of claims 1–3, 5, 6, 10–12, 14, and 15 (“the Challenged Claims”) of U.S. Patent No. 9,184,920 B2 (Ex. 1001, “the ’920 patent). Netflix, Inc. v. DivX, LLC, No. 2022-1043, 2023 WL 3115576 (Fed. Cir. Apr. 27, 2023) (nonprecedential). For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims are unpatentable.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” [Inst.] Dec. 12– 15. Additionally, we need not construe other claim terms to resolve the present controversy before us.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 5, 6, 10, 12, 14, and 15 of the ’920 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 103
Patent outcomesUS 9,184,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,920 - Amphenol Corp. v. PPC Broadband, Inc.InstitutedPTAB · Mar 20, 2024 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 1, 2, and 10–13 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim, including obviousness over Holmberg and Battey.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the Challenged Claims of the ’483 patent. Accordingly, we institute an inter partes review as to all the Challenged Claims of the ’483 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends claim 1 should be construed to require that “the drop cable retain its external jacket as it is routed internally.” Pet. 10. Petitioner contends this construction differs from Patent Owner’s apparent construction in the district court, “which allows the external jacket to be removed as the drop cable enters the DIB and the fibers routed inside the box without the external jacket.” Id. at 10–11. Patent Owner contends Petitioner’s narrower construction requiring the “drop cable” retain its external jacket is incorrect, but contends “the Board need not resolve this claim construction dispute to deny institution because Petitioner’s proposed Grounds 1–5 are all insufficient under” either party’s construction. Prelim. Resp. 9. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)). We address below, however, whether the recited cable types themselves constitute claim limitations.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“slack fiber. Prelim. Resp. 33–37. These arguments are not persuasive. First, Petitioner does not propose a bodily incorporation of Battey’s shelf into the device of Holmberg. Rather, Petitioner’s proposed combination retains splice tray 230 of Holmberg and relies on Battey for its disclosure of using a hinge connection for the splice tray. Pet. 40 (asserting that one of ordinary skill in the art “would have found it obvious to modify Holmberg pursuant to Battey, resulting in splice tray 230 moveable relative to main body 216”), 43 (“Such a modification would have been a simple substitution of a hinged connection instead of a fastener.”). Second, although Battey utilizes a fixedly mounted slack basket to store excess cable, we are directed to no disclosure or teaching in Battey that teaches away from using other means of storing slack fiber.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“For the reasons set forth below, we determine that part two of the Advanced Bionics framework has not been satisfied. Thus, we need not address whether part one of the framework is satisfied in view of the alleged cumulative nature of Laporte and Battey.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,008,483 - PTAB · Feb 26, 2024 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Institution
Instituted review of claims 3 and 4 on all grounds; the Board found a reasonable likelihood that claims 3 and 4 would be unpatentable as obvious.
RulingsInstitution decision- 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) (2021) (“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, Preliminary Reply, 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 showing at least one claim of the ’668 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’668 patent on all grounds stated in the Petition. See 37 C.F.R. § 42 (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (interpreting the relevant statutory provisions, in light of SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Ex. 2001 ¶ 22. Nonetheless, we give little weight to his testimony on this point because it 9 Patent Owner is reminded that arguments may not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1004 ¶ 5. Thus, on the present record and at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to construe “work surface” expressly at this stage of the proceeding because the construction of the term does not resolve the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,594,668 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 7, 2023 · IPR2022-00993 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1, 6, 7, 10–14, 19, 20, 23–30, and 32 are unpatentable under § 103 based on Sullivan995, Sullivan460, and Matthews.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“not implicitly define the phrase “analyzing the breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’994 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzing the breathing patterns” in our consideration of the issues before us.18” slip op. at 31
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“D. Other Claim Terms The Parties do not dispute the construction of any other claim terms, and we find that no other terms require express construction to resolve the controversy between the Parties. Accordingly, we do not construe any other claim terms expressly. See Realtime Data, 912 F.3d at 1375 (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 31
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Kirkness’s testimony, proposes that a” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“19, 20, 23–26, 28–30, and 32 and supported on the complete record before us, and, therefore, we adopt them as our own findings. See Pet. 66– 77. Accordingly, for the reasons explained by Petitioner, we find that the combination of Sullivan995, Sullivan460, and Matthews satisfies the elements of claims 6, 7, 10–14, 19, 20, 23–26, 28–30, and 32.” slip op. at 49
Patent outcomesUS 6,988,994 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,988,994 - Resmed, Inc. v. New York UniversityAll claims unpatentablePTAB · Dec 4, 2023 · IPR2022-00988 · APJ James A Tartal · IPR · Final written decision
The Board held claims 1–30 unpatentable by a preponderance of the evidence, based on the asserted obviousness grounds.
RulingsFinal written decision- ExcludeMotion to exclude, deniedDenied
“ORDER21 Upon consideration of the record before us, it is: ORDERED that Patent Owner’s Motion to Exclude (Paper 45) is denied; FURTHER ORDERED that Petitioner’s Motion to Exclude (Paper 46) is denied;” slip op. at 82
- Skill levelOther
“B. Level of Ordinary Skill in the Art In determining the level of ordinary skill in the art, various factors” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “troubled wakefulness” Dependent claims 12 and 22 each recite, “wherein the awake state is a” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“not implicitly define the phrase “analyzes the data to determine the patient’s breathing patterns,” as proposed, because Patent Owner has failed to show any sufficient evidence that the ’009 patent clearly expresses an intent to redefine the phrase or define the phrase in terms other than its plain and ordinary meaning. In other words, implied lexicography does not apply here. Accordingly, after reviewing Patent Owner’s contentions in light of all the evidence of record, we do not adopt Patent Owner’s proposed construction; instead, we apply the plain and ordinary meaning of “analyzes the data to determine the patient’s breathing patterns” in our consideration of the issues before us.” slip op. at 32
Patent outcomesUS 9,108,009 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,108,009 - PTAB · Nov 21, 2023 · IPR2023-01165 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–20 on all petition grounds, finding a reasonable likelihood that Peloton would show at least one claim obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Mr. Rawl’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “is a person having: (i) a bachelor’s degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field.” Pet. 12 (citing Ex. 1002 ¶¶ 31–34).6 Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. (citing Ex. 1002 ¶¶ 31–34). Patent Owner has not taken a position as to the level of ordinary skill in the art at this stage of the proceeding. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’340 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner “does not believe construction of any term is necessary to resolve the invalidity challenges in this Petition.” Pet. 11 (citing Ex. 1002 ¶¶ 29–30). Petitioner explains that, as of the filing of the Petition, none of the claim terms recited in the ’340 patent have been construed in a prior proceeding. Id. Patent Owner has not taken a position as to claim construction at this stage of the proceeding. On the present record, we need not construe any claim terms expressly because none are in dispute. See Realtime Data, 912 F.3d at 1375.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“3. Motivation to Combine and Reasonable Expectation of Success Petitioner contends Morris and Ray describe exercise equipment (e.g., treadmills) that detect a user’s presence while using the equipment and present the user’s exercise data on a display while a user is exercising to motivate the user to exercise and improve the user’s exercise experience. Pet. 12. Petitioner asserts one of ordinary skill in the art would have been motivated to combine the complementary teachings of Morris and Ray by incorporating Ray’s camera and software instructions for validating user exercise data in Morris’ treadmill apparatus with a reasonable expectation of success. Id. at 13. In particular, Petitioner contends Morris provides an express motivation to install and use Ray’s camera for user detection by teaching that “its exercise equipment could be fitted with optical sensor(s).” Id. (citing Ex. 1006 ¶ 33). Additionally, Petitioner asserts Morris’ treadmill includes an information processing system that processes sensor signals and includes virtual reality content on a screen displayed to the user. Id. (citing Ex. 1006 ¶¶ 32, 34–36, 50, 56–58, Figs. 6, 11–12C, claims 29–37). Thus, Petitioner contends “the signal processing and display system of Morris had the necessary capabilities to accommodate Ray’s user detection/validation software and implement, with a reasonable expectation of success, its functionalities that included producing and presenting the motivational image of the user exercising.” Id. at 13–14. Additionally, Petitioner contends one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray because of “Ray’s express teachings that its user validation/motivation technology could be ‘easily and affordably merged’ into a treadmill.” Pet. 14 (quoting Ex. 1004, 9:55–57). Petitioner asserts incorporating these features into Morris’ treadmill “would have been obvious and produced predictable results with a reasonable expectation of success.” Id. (citing Ex. 1002 ¶¶ 142–143).” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,227,340
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.