- PTAB · Apr 10, 2025 · IPR2024-01431 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 2–6, 28, and 33–37 based on all petition grounds, finding a reasonable likelihood that Haddad138 renders claims 2–6 and 33–37 obvious and Yap anticipates or renders claim 28 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“arguments, and evidence presented in the parallel proceeding.” Fintiv at 12 (emphasis added). Here, due to Petitioner’s stipulation, the record does not 9 To the extent Patent Owner’s argument emphasizes that the parties have completed substantial work regarding references asserted in the petition here (PO Fintiv Surreply 1–3), this argument addresses to Fintiv factor three rather than factor four. support that the Petition’s invalidity grounds have been or will be presented to the ITC for consideration on the merits. The record also does not support that the ITC will ever adjudicate the invalidity grounds raised here10 and does not support that the ITC will ever address the dependent claims at issue here. This is, therefore, not a situation where the ITC Investigation will “resolve key issues in the petition.” Fintiv at 13. Thus, this factor weighs against discretionary denial. 7. Fintiv Factor Five: Overlapping Parties Petitioner is the same party as the respondent in the ITC investigation,” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose 1 Petitioner calls “IPR2024-01431 (‘Petition B’).” See Paper 3 (PETITIONER’S EXPLANATION OF PARALLEL PETITIONS CHALLENGING U.S. PATENT NO. 11,069,737), 1. of determining whether Petitioner meets the threshold for instituting review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be forfeited. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 2–6, 28, and 33–37 of the ’737 patent based upon Petitioner’s asserted challenges to patentability.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Patent Owner argues11 that Petitioner “offers no motivation to modify Haddad138.” Prelim. Resp. 7–8. Patent Owner specifically argues that 11 Patent Owner also argues that Petitioner does not establish that Haddad138 anticipates claim 2. Prelim. Resp. 5–7. We do not address the anticipation challenge at this time. “Petitioner does not offer any showing on any motivation to modify Figure 9 of Haddad138 to change the configuration from a FSI to BSI architecture.” Id. at 8. On this record, Patent Owner’s argument does not undermine Petitioner’s persuasive showing. As Petitioner argues (Pet. 29), Haddad138 teaches that its “present disclosure” (which would include the Figure 9 disclosure) can be adapted for a front side illumination (FSI) or back side illumination (BSI) configuration. Ex. 1012 ¶ 48. The express teaching of Haddad138 provides motivation to modify Figure 9 of Haddad138. Patent Owner also argues that Petitioner “offers no showing that a POSITA would be able to modify the embodiment of Figure 9 to be back side illuminated with a reasonable expectation of success.” Prelim. Resp. 9. Patent Owner’s argument again does not undermine Petitioner’s persuasive showing. Petitioner cites Haddad138 expressly teaching a FSI or BSI configuration. Pet. 29 (citing Ex. 1012 ¶ 48). Haddad138’s teaching is sufficient, on this record, to establish a reasonable likelihood of Petitioner establishing a reasonable expectation of success at trial. Conclusion as to claim 2” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had a Bachelor’s degree in engineering, physics, or a related or equivalent field, and two or more years of experience researching, developing, designing, and/or evaluating image sensors using photonics. Ex-1004 ¶50. A person with less or different education but more relevant practical experience, or vice versa, may also meet this standard. Ex-1004 ¶50. Pet. 9. Patent Owner does not dispute the level of ordinary skill in the art at this time. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,069,737 - Uatp IP LLC v. Slick Slide LLCInstitutedPTAB · Apr 8, 2025 · PGR2024-00054 · APJ Julia Heaney · PGR · Institution
The Board instituted PGR on claims 1–17 and 22–28 and all asserted grounds, finding a sufficient likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a) (2018). Upon consideration of the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated that it is more likely than not that at least one claim challenged in the Petition is unpatentable. Further, Patent Owner has not persuaded us that it is appropriate to exercise our discretion not to institute review. Accordingly, we institute a post-grant review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- Skill levelSkill level patent owner adoptedOther
“On this record, we do not find Patent Owner’s proposed experience level of at least five years in measurement and analysis of coefficient of friction to be supported. As to the necessity of experience in textile engineering and fiber science, Patent Owner’s position, although not supported by declarant analysis of the factors listed above, is consistent with the disclosure of the ’854 patent, which describes features of a mesh layer in textile and fiber terms. See e.g., Ex. 1001, 10:17–11:14, 12:65–13:8, 14:20–24. On the whole, however, we do not discern on this record how specific experience in textile engineering and fiber science of a person of ordinary skill would materially alter the outcome at this stage of the proceeding. For purposes of this decision only, we apply Patent Owner’s proposed definition of a person of ordinary skill in the art, except for the requirement of five years of experience in measurement and analysis of coefficient of friction. The level of skill in the art remains an open issue in this proceeding. Further submissions by the parties may include argument and evidence that would assist in the resolution of this issue at the close of trial.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends “no formal claim construction is necessary in this proceeding.” Pet. 10; Reply 1, 4. Patent Owner contends the terms “mesh layer” and “coefficient of friction” require construction. Prelim. Resp. 14–16; Sur-reply 2–5. We have considered the parties’ arguments and discuss them below with regard to each of the terms Patent Owner contends should be construed. Because our determination that Petitioner demonstrates at least one challenged claim meets the threshold for institution (see SAS Inst., 138 S. Ct. at 1359–60) is not based on construing the term “mesh layer” or “coefficient of friction,” we determine we need not construe either claim term at this stage of the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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.”)). As further discussed below, we invite the parties to address claim construction at trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“We agree with Petitioner that the ’854 patent specification does not include clear and explicit lexicography or a disclaimer that would support requiring “coefficient of friction” to be determined by a specific ASTM test method. The portion of the specification Patent Owner asserts as a definition of “coefficient of friction” (see Ex. 1001, 11:31–42) is a description of an embodiment; we find it does not express patentee intent to redefine the term. Further, the statement that “the coefficient of friction … may be determined using the … ASTM D1894 standard test method” (id. at 11:32–35) indicates that use of that specific test method is optional. Accordingly, in the absence of patentee lexicography or disavowal, we do not limit the scope of the term “coefficient of friction” to require that it be measured by a specific ASTM standard. Luminara Worldwide, LLC v. Liown Elecs. Co., 814 F.3d 1343, 1353 (Fed. Cir. 2016) (“Absent lexicography or disavowal, we do not depart from the plain meaning of the claims.”); In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned against reading limitations into a claim from the preferred embodiment described in the specification, even if it is the only embodiment described, absent clear disclaimer in the specification.”). We note that the ’854 patent specification sets forth a definition for the coefficient of friction between the surfaces of the mesh material and the slide surface. Ex. 1001, 4:38–46. As stated above, however, we do not expressly construe any claim term at this stage of the proceeding. Should the parties address the construction of “coefficient of friction” at trial, we will make a determination after the close of evidence and any hearing.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,998,854 - PTAB · Mar 20, 2025 · IPR2024-01406 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 8–13, and 15 on all asserted grounds, finding a reasonable likelihood that Takeuchi anticipates those claims.
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 (2018); see also 37 C.F.R. § 42.4 (2023). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’202 patent. Accordingly, we institute an inter partes review of claims 1, 3, 4, 8–13, and 15 of the ’202 patent. A. Real Parties in Interest” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“or “POSITA”) would have had “a bachelor’s degree in mechanical engineering, electrical engineering, or a related field, and three to four years of experience, or a master’s degree in mechanical engineering, electrical engineering, or a related field, and one to two years of experience.” Pet. 6 (citing Ex. 1003 ¶ 13). Petitioner further contends that “[s]uch experience would include a familiarity with thermal fluid delivery devices and/or the components and underlying technology used therein, and a higher level of 1 US 5,249,586, issued Oct. 5, 1993 (Ex. 1004, “Morgan”). 2 EP 0 845 220 B1, published Jan. 26, 1998 (Ex. 1006, “Susa”). 3 US 2005/0205084 A1, published Sept. 22, 2005 (Ex. 1007, “Gupta”). 4 US 6,155,268, issued Dec. 5, 2000 (Ex. 1009, “Takeuchi”). at 6–7 (citing Ex. 1003 ¶ 13). Patent Owner states that, for purposes of the Preliminary Response, “Patent Owner maintains that Petitioners’ arguments fail even under Petitioners’ POSA definition.” Prelim. Resp. 13. On this record, we preliminarily adopt Petitioner’s undisputed proposed definition because it appears to be consistent with the cited prior art and the disclosure of the ’202 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). B. Claim Construction” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“term “wicked into contact” that the Board adopted in a prior inter partes review proceeding that addressed the same term in an earlier, related patent. Pet. 7 (citing IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022)). ‘wicked into contact’ to mean: ‘wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed [to] the heat produced by, the heater,’” and “[t]he present Petition adopts this formal construction for purposes of this IPR proceeding.” Id. (citing IPR2020-01602, Paper 32 at 15). Patent Owner also “adopts this construction for purposes of” the Preliminary Response, and argues that “Petitioner’s grounds fail even under its proposed construction of ‘wicked into contact.’” Prelim. Resp. 13. For purposes of this Decision, we adopt the Board’s prior construction of “wicked into contact,” namely, “wicked into contact (1) with the heater, or (2) with an area in close proximity to, and exposed to the heat produced by, the heater,” which is undisputed on this record. See Philip Morris Products, S.A. v. RAI Strategic Holdings, Inc., IPR2020-01602, Paper 32 at 8–15 (PTAB March 30, 2022). C. Asserted Anticipation by Morgan” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot reached
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). “A reference may anticipate inherently if a claim limitation that is not expressly disclosed is ‘necessarily present, or inherent, in the single anticipating reference.’” In re Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (quoting Verizon Servs. Corp. v. Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)). Based on the current record, we are not persuaded that Petitioner sufficiently establishes that Morgan discloses “a storage compartment . . . being arranged such that the liquid aerosol-forming material can be wicked into contact with the electrical resistance heater to volatilize the liquid aerosol-forming material” as recited in claim 1.” slip op. at 12
Claim construction§ 102 anticipationcites PhillipsPatents in suitUS 11,925,202 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01377 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–25 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review pursuant to 35 U.S.C. § 6(b). Under 35 U.S.C. § 314(a), 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.” The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–25 of the ’227 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’227 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving 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 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,326,227 - Posco Co., Ltd. v. ArcelormittalInstitutedPTAB · Mar 18, 2025 · IPR2024-01376 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–30 on all petitioned grounds, finding a reasonable likelihood of success, including that GMW14400 likely qualifies as prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons above, we determine that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail with respect to challenged claims 1–30 of the ’602 patent. At this juncture in the proceeding, we have not made a final determination with respect to the patentability of the challenged claims, or with respect to claim construction. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–30 of the ’602 patent is hereby instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 36
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“efficiency and integrity of the system are best served by denying or instituting review.” Fintiv at 6. Here, Fintiv factors one and five are neutral, factors two and three favor discretionary denial, factor four strongly weighs against discretionary denial, and favor six weighs against discretionary denial. The integrity of the system will benefit from institution because of the strong merits the Petition presents (factor six), and the ITC Investigation will not resolve these merits (factor four). This outweighs any potential inefficiency as indicated by factors two and three. We further note that any inefficiency in resolving the grounds the Petition presents is mitigated by the stay of the district court action (factor one). We, thus, decline to exercise discretionary denial under 35 U.S.C. § 314(a).” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“After considering the record as a whole, we determine that Petitioner has adequately demonstrated that the Office erred in a manner material to the patentability of challenged claims. As we explain in Section III(G), infra, Petitioner’s challenges to the ’602 patent appear strong based on the current record, and Patent Owner’s present arguments to the contrary are weak. Given the strength of Petitioner’s challenges on the present record, this is not a situation where we would say that “reasonable minds can disagree regarding the purported treatment of the art,” and we therefore determine that the Examiner erred by not considering the art in substantially the combination Petitioner proposes. Where Patent Owner states that “evidence that the Examiner did not consider these references in combination” is lacking (PO Sur-Reply 5), we disagree. If the Examiner considered these references in combination, the Examiner would have, given the apparent strength of Petitioner’s position on the merits on this record, issued a rejection. The lack of a rejection based on the combination proposed in the Petition provides some evidence that the Examiner did not consider these references in combination (because the lack of such a rejection raises the likelihood that the Examiner did not make such a consideration). 3. Conclusion Because Petitioner adequately made a showing of material error, we decline to exercise discretion not to institute inter partes review under 35 U.S.C. § 325(d). See Advanced Bionics, LLC, IPR2019-01469, Paper 6 at 8–9.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving 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 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,961,602 - PTAB · Jan 28, 2025 · IPR2024-01193 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–3, 5, 7–13, 15–19, and 23–25 based on the asserted grounds; the Board found a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). 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 ’448 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102 and 103. Because the ’448 patent was filed after March 16, 2013, the effective date of the relevant amendment, the AIA versions of §§ 102 and 103 apply. communication technologies.” Pet. 5 (citing Ex. 1003 ¶ 13–15). For purposes of this Decision, we adopt Petitioner’s description of the level of ordinary skill in the art, as it is consistent with the technology described in the ’448 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“B. Claim Construction We construe a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner contends that “no claim elements need a formal construction for purposes of resolving controversies in this proceeding.” Pet. 5. Based on the record before us, we do not find it necessary to provide express claim constructions of any claim 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 foundInstituted
“Zhang, in light of Zill’s suggestion, to generate wakeup packets at Zhang’s server 404 rather than at end user 406. Pet. 36 (citing Ex. 1004 ¶¶ 61, 62; Ex. 1003 ¶¶ 112–119). Petitioner contends that doing so would have allowed Zhang to accommodate more types of requesting computers, including legacy hosts that might not have the software or hardware to securely process Zhang’s query replies and generate wakeup messages. Id. at 36–37 (citing Ex. 1004 ¶¶ 61, 62, 64, 65, 77; Ex. 1005 ¶ 111; Ex. 1003 ¶ 113). Petitioner also argues that generating the wakeup messages at the server would improve security, as servers would have been able to operate better security features. Id. at 37 (citing Ex. 1004 ¶ 36; Ex. 1005 ¶¶ 40, 111; Ex. 1003 ¶¶ 114–115). Petitioner further argues that generating wakeup messages at the server would have reduced the quantity of messages exchanged containing sensitive information, reducing the risk of interception by a malicious actor. Id. at 37–38 (citing Ex. 1003 ¶ 116). Petitioner further argues that it would have been more efficient to generate the wakeup message at the server, as Zill suggests, as the server can include optimized hardware. Id. at 38 (citing Ex. 1003 ¶ 117). According to Petitioner, the combination would only require combining familiar elements according to known methods, to yield predictable results, and that a skilled artisan would have a reasonable expectation of success doing so. Id. at 38–39 (citing Ex. 1003 ¶¶ 118–119). Patent Owner does not yet contest these allegations. Upon consideration of Petitioner’s evidence, including Mr. Kardashov’s testimony, we are persuaded that Petitioner shows sufficiently that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of Zhang and Zill.” slip op. at 21
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,602,448 - PTAB · Jan 28, 2025 · IPR2024-01192 · APJ Michael J Strauss · IPR · Institution
The Board instituted inter partes review of claims 1–10 and 16 on all asserted §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
“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 ’916 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–10 and 16 of the ’916 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art at the time of the ’916 patent “would have had a bachelor’s degree in electrical engineering and two years of work experience with network and communication technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 12–14). Patent Owner has not provided any proposed qualifications for a person of ordinary skill in the art. 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 ’916 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim elements need a formal construction for purposes of resolving the controversy in this proceeding.” Pet. 9 (citing Ex. 1003, ¶¶ 43–44; Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011), Google Inc. v. Intellectual Ventures II LLC, 701 Fed. Appx. 946, 956 (Fed. Cir. 2017)). Petitioner states “[a]ll claim terms should be construed according to the Phillips standard.” Id. (citing Phillips, 415 F.3d at 1303; 37 C.F.R. § 42.100). Patent Owner presents no proposed claim constructions at this time. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“First, Petitioner contends, with the Kardashov Declaration providing supporting testimony, that a [person of ordinary skill in the art] would have understood that implementing [the] Lorex Manual’s system to include a conventional “network server” that facilitates hole-punching (as suggested by Kim941) would provide an improved and advantageous approach for establishing a P2P connection between the DVR and remote client device when the DVR is located behind a firewall and/or network address translator (NAT) that would otherwise prevent the remote client device from initiating a P2P connection with the DVR (e.g., due to common security policies of firewalls/NATs that block unsolicited inbound communications from devices outside of the DVR’s local network). Id. at 15 (citing Ex. 1003 ¶ 74; Ex. 1008 ¶ 18–19, 121).” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,774,916 - PTAB · Jan 22, 2025 · IPR2024-01186 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claims are obvious over Zhou and Kwatra, with Shi added for certain dependent claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–20 of the ’894 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–37). Petitioner states that, “[a]lternatively, a POSITA would have four years of experience working on image or video processing or digital cameras.” Id. Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’894 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner “does not believe any terms require a formal construction.” Pet. 6. Patent Owner agrees “no claim terms presently require construction.” Prelim. Resp. 11–12. We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Zhou and Kwatra with a reasonable expectation of success. Pet. 8–10, 30–35; Ex. 1002 ¶¶ 104–117; Ex. 1004, 1:41–45, 7:41– 42, 7:47–54, 9:64–65, 11:55–67, Fig. 7; Ex. 1005, code (57), 1:17–19, 1:52– 57, 5:64–6:5, 13:23–48, 13:66–14:37, 16:13–32, 17:38–48, 18:54–56, 26:12–21, Fig. 13.” slip op. at 22
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,574,894 - PTAB · Jan 22, 2025 · IPR2024-01165 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood that claim 1 would have been obvious over Zhou and Cai.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 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 “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 provided below, we determine that Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’840 patent is unpatentable, and we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that: A person of ordinary skill in the art (POSITA) in the field of the ’840 patent would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras. Alternatively, a POSITA would have four years of experience working on image or video processing, or digital cameras. An advanced graduate degree in the disciplines cited above may make up for the work experience indicated above. Pet. 6 (citing Ex. 1002 ¶ 32). Patent Owner applies the same definition. Prelim. Resp. 9. We use this agreed-upon definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties both assert that no terms require a formal construction. Pet. 6–7; Prelim. Resp. 9–10. Reviewing the arguments set before us, we determine that no claims require construction to resolve a dispute between the parties at this time. Realtime, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“b) Reason to Combine & Expectation of Success As explained earlier, Petitioner asserts that it would have been obvious to improve Zhou’s video stabilization techniques by using the techniques in Cai for using future frames to characterize the video as having zero motion or not. Pet. 36. Patent Owner first argues that neither reference “offers any hint or suggestion of combining such reactive systems to create a proactive stabilization solution.” Prelim. Resp. 17; see also id. at 17–19 (similar). Patent Owner has not offered a claim construction, or otherwise explained, how the claims require a “proactive stabilization solution.” Thus, this argument is unpersuasive. Patent Owner next argues that Zhou and Cai are technically incompatible. Id. at 20–23. In particular, Patent Owner argues that Zhou “uses buffering to adjust stabilization strength,” whereas Cai uses buffering “for trajectory adjustment and distinguishing jitter from zero-motion or lowspeed movements.” Id. at 21–22 (emphasis removed). On this record, however, we are not provided with sufficient technical reasoning explaining how using the buffer for one purpose precludes its use for another purpose. Patent Owner cites its declarant, Dr. Foroosh, but his testimony merely repeats Patent Owner’s arguments without any meaningful elucidation. Id. at 22 (citing Ex. 2001 ¶ 70); 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.”); Xerox Corp. v. Bytemark, Inc., IPR2022- 00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). On this record, we are shown no technical impediment with using the buffer in Zhou for distinguishing non-zero motion by looking ahead some number of frames, as proposed in the Petition.” slip op. at 12
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840 - PTAB · Jan 22, 2025 · IPR2024-01164 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–21, finding a reasonable likelihood that claim 1 would have been obvious over Bell and Shi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Conclusion for the Bell & Shi Ground In summary, we determine on this limited record that Petitioner has shown sufficiently that Shi discloses the low-light high-pass parameter of claim 1 and that there would have been a reason to combine Bell and Shi. We adopt Petitioner’s remaining unchallenged assertions regarding claim 1 as our own. We are not persuaded by Patent Owner’s objective indicia analysis, which is lacking a showing of nexus. In conclusion, we determine that Petitioner has demonstrated a reasonable likelihood of success in showing that the subject matter of claim 1 of the ’840 patent would have been obvious in view of Bell and Shi. No issue unique to any of the other claims in this ground is raised at this time.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Looking to the claim language itself, we note that the claim mentions “low-light high-pass parameter” once, in the context of listing it as one of three alternative things covered by the claim. Ex. 1001, 30:35–38. We find the specification of the ’840 patent discusses the low-light high-pass parameter in two paragraphs. Id. at 21:59–22:21. In these passages, the ’840 patent states that the low-light high-pass parameter may be “a parameter that controls the amount/strength of smoothing performed to generate the smoothed trajectory.” Id. at 21:59–61. The parameter may take a value corresponding to the amount of motion blur compensation to be used. Id. at 22:8–21. Thus, the specification states that the low-light high-pass parameter is used to control the amount of motion blur compensation.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Patent Owner then argues that Bell and Shi are incompatible techniques and would not be combined. Prelim. Resp. 19–20. In particular, Patent Owner argues that Bell preemptively adjusts for future motion, whereas Shi reacts only after blur is detected. Id. at 20. On this record, this argument is unpersuasive because Patent Owner has not sufficiently explained the alleged technical incompatibility. Patent Owner’s position relies on the testimony of Dr. Foroosh, but we do not credit his testimony here because it merely mirrors what Patent Owner has argued, without technical explanation. Ex. 2001 ¶ 65; 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”); Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential). In contrast, both Bell and Shi look at future frames for motion smoothing. Ex. 1006, 10:10–16 (describing Bell’s “look-ahead buffer”); Ex. 1007, 1:61– 65 (describing Shi’s “use [of] future frames”). Thus, on this record, we are not persuaded that there is a technical incompatibility in the manner Patent Owner alleges.” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusOther
“Prelim. Resp. 23–31. Patent Owner’s position is underpinned by its evidence purporting to show its “dominant position in the U.S. action camera market,” based on its “HyperSmooth technology” that it asserts “has garnered widespread industry recognition.” See generally id. However, even if we were to accept Patent Owner’s argument that it has a revolutionary and successful product, that does not mean that all claims of its patents would have been non-obvious. For us to give substantial weight to objective indicia of non-obviousness, a proponent must establish a nexus between the evidence and the merits of the claimed invention. ClassCo, Inc., v. Apple, Inc., 838 F.3d 1214, 1220 (Fed. Cir. 2016). “[T]here is no nexus unless the evidence presented is ‘reasonably commensurate with the scope of the claims.’” Id. (quoting Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)); see also Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010) (“For objective evidence of secondary considerations to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.”) (cleaned up). Patent Owner here has not attempted a nexus analysis in its Preliminary Response. At best, it improperly incorporates by reference a claim chart (Exhibit 2016) served in the related ITC proceeding. Prelim. Resp. 25; 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document.”). Even then, the claim chart appears to admit that claim 1 does not read on Patent Owner’s technology. Ex. 2016, 30.2 On this record, we cannot determine whether, or the extent to which, Patent Owner’s assertions of non-obviousness are due to the claimed invention because of the failure to show nexus to the subject matter of the claims.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,958,840
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.