- Hanshow America Inc. / Hanshow Technology Co., Ltd v. Ses-Imagotag Inc.Institution deniedPTAB · May 20, 2024 · IPR2024-00190 · APJ Brian J Mcnamara · IPR · Institution
The Board denied institution of IPR challenging claims 1–9, exercising discretion because the second-ranked petition’s grounds were insufficiently shown to be materially different from those in the instituted first-ranked petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“Having instituted trial in the -189 IPR and considered all the arguments and evidence of record presented in this proceeding, we exercise our discretion and decline to institute trial in the -190 IPR. VIII. ORDER For the reasons discussed above, it is ORDERED that the Petition is DENIED.” slip op. at 11
- Parallel petitionsDenied
“not present in a higher-ranked petition weighs against instituting on the lower-ranked petition, the mere existence of the potential dispute in the lower-ranked petition alone need not be determinative. We consider other circumstances of this case. Petitioner presents other challenges in the -190 IPR that address all the challenged claims, but do not rely on Ghosh (Grounds 1–3 challenge claims 1–9 based on combinations of Siotia, Sakata, Akao, and Chen; Grounds 4–6 challenge claims 1–3 and 5–9 (claim 4 is not challenged) based on various combinations of Ghosh, Sakata, Akao, and Chen). Thus, even if Patent Owner removed Ghosh as prior art, Petitioner’s other challenges to all the claims that are challenged on multiple grounds in the -189 IPR would remain, with Siotia replacing Ghosh in the -190 IPR. As discussed further below, Petitioner’s ranking does not explain sufficiently why the Siotia-based challenges remaining in the -190 IPR are not cumulative to the Fujiwara based challenges and the Bandy/Fowler based challenges articulated in the -189 IPR.” slip op. at 8
Discretionary denialPatents in suitUS 10,674,340 - Sonos, Inc. v. Google LLCInstitution deniedPTAB · Mar 8, 2024 · IPR2023-01284 · APJ Kevin F Turner · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), exercising discretion because the follow-on petition substantially overlapped with an earlier petition and the General Plastic factors favored denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“We note, first, that the General Plastic factors enumerated above are separately listed, such that we do not agree that factor 1 must be contingently read in lockstep with the other factors; each factor should be considered separately and an overall, holistic view of the totality of the circumstances presented should be considered. As such, we do not agree that any apparent lack of “road-mapping” concerns obviates this factor. Second, we agree with Patent Owner that the degree of overlap is substantial, with 14 of the 15 challenged claims being considered again under different grounds. Additionally, although claim 19 is challenged for the first time in the instant Petition, its challenge also includes challenges to the remaining 14 claims. This is also a relevant difference between the instant Petition and the proceeding cited by Petitioner, namely Panduit Corp. In the latter proceeding, the additional, second petition sought review of three additional claims only, i.e., not those additional claims, as well as previously instituted claims, and several were not previously instituted because “one of the asserted references was not shown to have been a printed publication,” and the panel did not construe the additional claims in the original proceeding. Panduit Corp., Paper 8, 9–10. In contrast, the instant Petition is largely directed to the same claims of the same patent, such that we determine this factor weighs in favor of discretionary denial.” slip op. at 7
Discretionary denialPatents in suitUS 11,024,311 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01143 · APJ Kristen L Droesch · IPR · Institution
The Board instituted IPR on claims 1–6, 8–14, 16–19, 21–30, and 32, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the petitioner 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf “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.” Fintiv Memo 7 (citing Sotera). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 8
- Strike new argumentNew argument disregardedDecided for petitioner
“As an initial matter, for the first time in the Sur-reply Patent Owner contends that we should exercise discretion to deny institution on the basis of the HP district court proceeding and the Acer district court proceeding. Patent Owner did not previously address discretionary denial on the basis of these district court proceedings, but instead addressed “the two parallel district court proceedings involving . . . Dell and Lenovo.” Prelim. Resp. 56; see id. at 56–57. Patent Owner’s arguments are belated and outside the proper scope of a proper sur-reply, and should not be considered. “Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.” Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019) (“CTPG”)10 74 (citing 37 C.F.R. § 42.23). It “does not mean to proceed in a new direction with a new approach as compared to the positions taken in a prior filing.” Id. In any event, even if we were to consider Patent Owner’s belated arguments, Patent Owner does not direct us to evidence to support its argument that HP and Acer are real parties-in-interest or privies. Nor does Patent Owner direct us to evidence demonstrating any involvement or control by HP or Acer in this proceeding. Thus, HP and/or Acer’s actions, including whether they raise these same grounds of unpatentability in their respective district court proceedings, should not be imputed to Petitioner.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“has shown a reasonable likelihood of establishing that (1) July 2005 WWiSE is a prior art printed publication and (2) the subject matter of claim 1 is unpatentable as obvious in view of the combination of Hansen and WWiSE. On that basis, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.16” slip op. at 38
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“Petitioner alleges and provides evidence that July 2005 WWiSE was posted to, and continuously publicly available from, sources maintained by IEEE from July, 2005, until the earliest priority date of the ’707 patent. Petitioner further alleges and provides evidence that any interested member of the public could access July 2005 WWiSE during this time period. Although Patent Owner contends that WWiSE could not have been located by a skilled artisan, Petitioner’s evidence shows that WWiSE was made available to members of the TGn Task Group of the IEEE 802.11 WLAN Working Group without any restrictions of confidentiality or limits on dissemination. And, Petitioner provides evidence that interested members of the public would have known to look for WWiSE because the proposals made to IEEE in this time frame were frequently discussed in industry publications. In addition, we note that WWiSE lists over fifty contributors that were associated with a wide variety of technology companies in this space. Ex. 1005, 2–4. The parties may want to consider during trial, and in accordance with our Rules, whether this evidences or otherwise supports public availability. We determine that Petitioner has established the public accessibility of WWiSE sufficiently for the purpose of institution.” slip op. at 22
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,584,262 - Intel Corporation v. Ax WirelessInstitutedPTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., 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 controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,917,272 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01138 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Id. at 22. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“2022)18 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id. In the Reply, Petitioner notes that it is not a party to any proceeding brought by Patent Owner, but named Dell and Lenovo as real parties-in-interest. See Reply 1. Petitioner filed stipulations from its real parties-in-interest Dell and Lenovo, in which each of Dell and Lenovo state that they “will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Exs. 1041, 1042. Petitioner further notes that Patent Owner brought four separate district court proceedings asserting the ’459 Patent against Dell, Lenovo, as well as against HP Inc. (“HP”) and Acer Inc. (“Acer”). See Reply 1. According to Petitioner, “[t]he Sotera stipulations from Dell and Lenovo remove any overlap between the present IPR and the Dell and Lenovo litigations.” Id. Petitioner asserts, “[g]iven the Sotera 18 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf stipulations and the Fintiv Memo guidance, the Board should decline to exercise its discretion to deny institution.” Id. at 1–2. In light of the mandatory Fintiv guidance regarding Sotera stipulations discussed above, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. The Sotera stipulations filed by Petitioner’s real parties-in-interest Dell and Lenovo mitigate the concerns of potentially conflicting PTAB and district court decisions as to the disputes between Petitioner, Dell, and Lenovo, and Patent Owner.” slip op. at 53
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,554,459 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01135 · APJ Michael T Cygan · IPR · Institution
Instituted IPR on claims 1–3, 5, 7–11, and 13 based on two obviousness grounds: Hansen with WWiSE, and Hansen with WWiSE and Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’361 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’361 patent on all asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“shown, for purposes of institution, that each element of claim 1 has been taught or suggested by the combined teachings of Hansen and WWiSE. Further, that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the teachings of Hansen and WWiSE as suggested by Petitioner, and would have a reasonable expectation of success in doing so. On the record before us, and for purposes of institution, Petitioner has sufficiently shown that claim 1 would have been obvious over Hansen and WWiSE. 4. Claims 2–3, 5, 7–11, and 13 Petitioner provides a detailed analysis of the limitations of claims 2–” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,973,361 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01136 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable under § 103.
RulingsInstitution decision- 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) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’707 patent on the grounds presented.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,079,707 - PTAB · Jan 9, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6 and all asserted 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
“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 Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’794 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’794 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis 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’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “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.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner states that “no claim terms require construction.” Pet. 10. Patent Owner’s Preliminary Response does not contain a section titled Claim Construction or similar. See Prelim. Resp. i–ii (Table of Contents). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,426,794 - PTAB · Jan 8, 2024 · IPR2023-01014 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 4–6, 8, 11–14, and 18–20, finding the asserted obviousness challenges compelling over Lu-577 and Tian and Nielsen-372, Steinberg, and Tian.
RulingsInstitution decision- 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) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may 1 Petitioner identifies “TVision Insights, Inc.” as the real party-in-interest to this proceeding. Pet. 89. 2 Patent Owner identifies “The Nielsen Company (US), LLC” as the real party-in-interest to this proceeding. Paper 3, 2. Patent Owner states that “it is a subsidiary, either directly or indirectly, of numerous parent entities, and that Brookfield Corporation (NYSE: BN; TSX: BN.TO), through its subsidiaries and investment funds and vehicles, indirectly owns 10% or more of Patent Owner The Nielsen Company (US), LLC.” Id. 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.” After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we institute an inter partes review as to claims 4–6, 8, 11–14, and 18–20 of the ’243 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Conclusion Regarding Discretionary Denial In summary, factor 1 is neutral, factor 2 weighs heavily against denying institution, factor 3 weighs marginally in favor of denying institution, factor 4 weighs heavily in favor of denying institution, factor 5 weighs in favor of denying institution, and factor 6 weighs very heavily against denying institution. However, the Guidance Memo provides that where the Board “determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Guidance Memo at 4–5; see Fintiv at 5–6. And, in CommScope Techs. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) (precedential), the Director instructed that, even where the analysis of Fintiv factors 1–5 favors denial of institution, the Board should not deny institution where there is a showing of unpatentability by compelling merits. As noted above, the Petition in this proceeding meets this high standard. For these reasons, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 52
- Strike new argumentNew argument consideredDenied
“29 In its Sur-reply, Patent Owner repeatedly argues that we should disregard Petitioner’s arguments opposing discretionary denial in the Reply because they were waived. See, e.g., Sur-reply 1 (“Petitioner’s Reply to Patent Owner’s Preliminary Response (Paper 7, ‘Reply’) introduces new arguments that could have been included in the Petition for Inter Partes Review (Paper 2, ‘Petition’) and that should be disregarded as being waived accordingly.”). We reject this argument. Petitioner was not required to anticipate in the Petition all of Patent Owner’s arguments for discretionary denial. See Vector Flow, Inc. v. HID Global Corporation, IPR2023-00353, Paper 11 (PTAB Aug. 10, 2023) (Director vacating decision denying institution and ordering filing of a reply to allow petitioner to address discretionary denial arguments in preliminary response.). In this case, the Board specifically authorized Petitioner to file a reply to address the request for discretionary denial by Patent Owner and for Patent Owner to file a sur-reply. Patent Owner was afforded the opportunity to substantively respond to the Reply in the Sur-reply.” slip op. at 47
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that [a] POSITA [(Person of Ordinary Skill in The Art)] would have been a person with a bachelor’s degree in computer science, electrical engineering, or a similar field with at least two years of experience in media analysis or a person with a master’s degree in computer science, electrical engineering, or a similar field with a specialization in media analysis. . . . . A person with less education but more relevant practical experience may also meet this standard. . . . . A POSITA in 2011 would have known or been able to implement systems that collect and analyze audio and image data, techniques for audio feature extraction and identification, techniques for image processing (e.g., resolution adjustment), and face or head analysis techniques. Pet. 7 (citing Ex. 1003 ¶¶ 46–49). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. See generally Prelim. Resp. Determining the level of ordinary skill in the art involves various factors, 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 prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’243 patent and the asserted prior art.11” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,470,243 - PTAB · Dec 14, 2023 · IPR2023-00978 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 across all asserted grounds, finding a reasonable likelihood that both claims are obvious over Vornefeld and Atsuta.
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 Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’931 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis 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’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “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.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Patent Owner’s allegations appear to be mere speculation. Thus, we determine that Patent Owner has not demonstrated that there is a legally significant relationship between the two petitioners that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Vornefeld is art previously presented to the Office, Petitioner’s respective challenges rely heavily on Atsuta and Goldburg for teachings pertaining to the limitation added by dependent claims 28 and 29, the only challenged claims in this case. Patent Owner does not assert that Atsuta was previously presented to the Office. Patent Owner implies that Goldburg was previously presented to the Board in the prior IPR, arguing that “[prior petitioner] Sprint specifically relied on Goldburg as part of its expert declaration in the prior IPR to show the state of the art.” Prelim. Resp. 50. Petitioner replies that, “[w]hile [Patent Owner] offers that Goldburg was cited (for background) in a declaration in the Sprint IPR . . . , [Patent Owner] fails to acknowledge that Goldburg was not (i) an exhibit in the Sprint IPR, (ii) mentioned or applied in the Sprint Petition, or (iii) addressed in the final written decision.” Pet. Reply 3 (citing Exs. 1009, 1014). Patent Owner does not dispute Petitioner’s representations. See PO Sur-reply 3 (arguing that Petitioner “quibbles over whether Goldburg was a formal exhibit before the Board in the prior Sprint IPR,” but not asserting that Petitioner is incorrect). We find that Goldburg was not previously presented to the Board.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,230,931
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.