- Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00846 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–29, finding a reasonable likelihood that claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 are obvious over Burger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . 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 explained below, we institute an inter partes review of the ’954 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” we should construe “access message” to mean “a signal or notification enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. At this stage of the proceeding, we credit Dr. Traynor’s uncontroverted testimony. As to claims 3, 14, and 17, Petitioner points to Robinson’s description of a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175– 178). Petitioner argues that, in the combination of Burger and Robinson, Robinson’s age-verifying information would be stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. Prelim. Resp. 26. On the current record, Petitioner has shown sufficiently that Robinson teaches the additional limitations of claims 3, 14, and 17, and that a skilled Burger and Robinson.” slip op. at 29
- Expert testimonyPetitioner expert creditedOther
“Petitioner contends that Burger’s pocket vault 102 is “an integrated device.” Id. at 23 (citing Ex. 1005 ¶¶ 94–95, 118, 134, Fig. 2; Ex. 1003 ¶ 90). Petitioner argues that write-once memory 212, a storage element that is not capable of being subsequently altered, persistently stores biometric data of the user, and that other hard-wired memory stores a pocket vault ID and encryption/decryption information. Id. at 24–27 (citing Ex. 1005 ¶¶ 112, 114, 118, 127, 129, 154, 182, 551–552, Fig. 2; Ex. 1003 ¶¶ 22–23, 91–96). Dr. Traynor testifies that it would have been obvious to implement the hardwired memory as protected, write-once memory so that sensitive information that is not subject to change (e.g., device ID, encryption information) is kept secure and not tampered with. Ex. 1003 ¶ 98. We credit this testimony at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,954 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01335 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 under the petition’s § 103 grounds and joined Apple to IPR2024-00234.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In view of these representations by Petitioner, and Patent Owner’s statement that it does not oppose joinder, and having reviewed the Petition, we determine that, under the current circumstances, it is appropriate to exercise our discretion to institute inter partes review of the challenged claims based upon the same grounds authorized and for the same reasons discussed in the Google DI (Google IPR, Paper 10). Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the Petition for the same reasons given in the Google DI considering the same issues.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources.” slip op. at 7
NonePatents in suitUS 9,298,905 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01398 · APJ David C Mckone · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on the petitioned grounds and joined Apple Inc. to IPR2024-00573.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Microsoft IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Microsoft IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Microsoft IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Microsoft IPR (IPR2024-00573).” slip op. at 7
NonePatents in suitUS 8,646,042 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01334 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 under the asserted § 103 grounds and granted Apple’s motion to join the Google IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“C. Institution of Inter Partes Review This Petition is substantially identical to the petition in the Google IPR, challenging the same patent and claims, based on the same grounds of unpatentability, and relying upon the same evidence (including the same prior art combinations supported by the same expert declaration). According to Petitioner, “the 1334 Petition involves the same patent, challenges the same claims, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Google Petition.” Joinder Mot. 3; accord id. at 5 (“The Google Petition and 1334 Petition” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if the Google IPR petitioner ceases to participate in the IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00233).” slip op. at 7
NonePatents in suitUS 8,886,954 - Apple Inc. v. Proxsense LLCInstitutedPTAB · Oct 8, 2024 · IPR2024-01333 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–6 and 8–17 under the petition’s § 103 grounds and granted Apple’s motion to join IPR2024-00232.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . 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 explained below, we institute an inter partes review of the ’730 patent. We also join Petitioner as a party to IPR2024-00232.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial.” slip op. at 7
NonePatents in suitUS 8,352,730 - PTAB · Aug 29, 2024 · IPR2024-00671 · APJ Avelyn M Ross · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 15, 17, 18, 51, 54, and 57 on all four asserted obviousness grounds, finding a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Here, Petitioner relies on modifying Richardson with Zhao to increase the USB input voltage. See Pet. 25–27; 34–42. Therefore, because Petitioner has shown sufficiently, based on the current record, that Zhao teaches the USB charging limitations missing from Tinaphong, Balmefrezol, and Lenk, Zhao is therefore not substantially the same as Tinaphong, Balmefrezol, or Lenk. Thus, Petitioner does not rely on Zhao in the same manner as the Examiner relied on Tinaphong, Balmefrezol, or Lenk during prosecution and we are not persuaded that the combination of Richardson and Zhao, a combination not considered by the Examiner, is duplicative or cumulative of prior art and arguments previously considered by the Examiner. Accordingly, we are persuaded, based on the totality of the evidence presented, that the combination of Richardson and Zhao does not present “the same or substantially the same prior art that was previously presented to the Office.”” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On this record, Patent Owner’s arguments are unpersuasive. Although Patent Owner contends that Petitioner fails to address “the nature” of Richardson’s jump starter (see Prelim. Resp. 45), Richardson’s jump starter charges batteries at various voltages (see Ex. 1005 ¶ 54). Petitioner, at this stage of the proceeding, has established that an ordinary artisan would have understood that Zhao’s step-up convertor can “charge a plurality of series connected (e.g., lithium) batteries” (see Ex. 1006, 6–11) and that Zhao would “be well-suited for starting a traditional lead-acid vehicle starter battery” like the one in Richardson (see Pet. 35–36). Moreover, the claims recite “converting power from a USB power source to increase power voltage.” At this stage and on this record, the Board disagrees that this limitation requires increasing to a particular power voltage. See Ex. 1001, 8:40–9:6, 11:4–6, 11:46–12:49, 13:29–65, 14:11–15:12. Patent Owner’s contrary argument that an ordinary artisan would not have been motivated to modify Richardson to include a charging port because Richardson did not have a charging port (see Prelim. Resp. 45–47) is conclusory. In contrast, Petitioner argues that an ordinary artisan would have been motivated to include Zhao’s charging port in Richardson’s jump starter for convenience, as USB connectors are considered “standard” and to avoid the need to supply proprietary chargers. Pet. 35–39. Petitioner’s proposed reasons to combine Richardson and Zhao have rational underpinnings. Accordingly, we are persuaded that Petitioner has shown sufficiently at this stage of the proceeding that an ordinarily skilled artisan would have had reason to combine Richardson and Zhao with a reasonable expectation of success in the combination.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 17–18 (citing Ex. 1003 ¶¶ 41–44; Ex. 1014 at 10–11). Patent Owner “does not propose a different level of skill in the art[.]” Prelim. Resp. 25. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’243 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’243 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,584,243 - PTAB · Aug 29, 2024 · IPR2024-00577 · APJ Avelyn M Ross · IPR · Institution
The Board instituted IPR on claims 1, 32, 38, 39, 47, 52, and 54 on all asserted grounds after finding a reasonable likelihood of prevailing on the Richardson–Zhao challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“(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 the 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.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art, “as of the claimed priority date of July 3, 2014, would have been a person with at least a bachelor’s degree in electrical engineering or its equivalent and at least two years of experience in the field of electrical engineering including some experience with DC power supply or battery charger design[;] . . . [l]ess work experience could be compensated for by a higher level of education, such as a master’s degree, and vice versa.” Pet. 22 (citing Ex. 1003 ¶¶ 39– 42; Ex. 1014, 10–11). Patent Owner “does not propose a different level of skill in the art.” Prelim. Resp. 20. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’023 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand the ’023 patent and the prior art. We will make any final determination pertaining to the level of ordinary skill in the art, however, on the full trial record.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner submits there are no formal claim constructions necessary in this proceeding.” Pet. 23. Patent Owner responds that “denial of institution [does] not require addressing the construction of claim terms.” Prelim. Resp. 19. However, Patent Owner also notes that “during the related ITC investigation[, Petitioner] proposed a specific construction for ‘USB input circuit’ that excludes USB input circuits having bidirectional capabilities . . . [and is] contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit.” Prelim. Resp. 19–20 (citing Ex. 2009, 25– 33; Pet. 65). Patent Owner contends that the proposed construction in the ITC investigation is “contrary to the Petition’s interpretation of Paparrizos as teaching a USB input circuit, and is therefore clearly germane to this proceeding.” Id. at 25 (citing Pet. 65). Patent Owner’s argument regarding purported inconsistent positions by Petitioner may have some merit. But, on this record, Patent Owner’s argument is not fully developed. As neither party proposes an express construction for our consideration and because we determine that claim construction is not necessary to decide whether to institute, we do not expressly construe any claim terms. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,447,023 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Aug 13, 2024 · IPR2024-00573 · APJ Thu A Dang · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on all three §103 grounds, 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
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“does not suggest a requirement that information be received from a PDK in exchange for an access key. Nothing in the Specification clearly limits the integrated, secure memory “enabl[ing] one or more of an application a function, and a service” to “receiv[ing] information from a PDK in exchange for an access key,” as Patent Owner proposes. Prelim. Resp. 21–28. Thus, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key. Id. We are unpersuaded by Patent Owner’s contention that the Specification implicitly defines “enabl[ing] one or more of an application a function, and a service” as requiring receiving information from a PDK in exchange for an access key. Prelim. Resp. 21–28. As Patent Owner argues, “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Id. at 20 (citing Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016) (emphasis added)). However, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as requiring “receiving information from a PDK in exchange for an access key.” Id. at 21–28; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“We find Patent Owner’s arguments unavailing. In particular, Patent Owner is relying on a claim construction of “enabling,” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 29–31) that is not consistent with our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to, and does not require, “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein upon its completion “‘enabl[es] access to secure physical or digital assets’ (‘enabling one or more of an application, a function, and service’).” See Pet. 37. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of the integrated RDC and integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute 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.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See 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 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . 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 explained below, we institute an inter partes review of the ’730 patent.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,352,730
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.