- Cub Elecparts Inc. v. Orange Electronic Co., Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00744 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have a bachelor’s degree in electrical engineering and at least one year of experience in sensor/detector design or RF communications (RFIDs)” and “would have a working knowledge of tire pressure management systems and, as most POSA would also be automobile owners, would have had personal experience with tire pressure management systems which have been required in all new cars, trucks, and SUVs in the United States since 2007.” Pet. 17. Petitioner adds that “[e]ducation may substitute for experience and vice versa.” Id.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their ordinary and customary meaning. Pet. 17. Petitioner notes that, in the tire pressure detecting field, terms such as “detector,” “sensor,” and “monitor” relate to the same device and can be used interchangeably. Id. at 17–18. Patent Owner contends that no claim term needs construction to resolve the grounds asserted in the Petition. Prelim. Resp. 16. On the present record, 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” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s unsupported assertion that tire pressure sensors typically are programmed with only the ID as part of the factory installation is insufficient to establish obviousness in this instance. Petitioner does not provide adequate reasoning or evidence to 11 Petitioner relies on the same analysis of this claim 26 limitation for the substantially similar limitation of claim 27. Pet. 66. Accordingly, our analysis of the claim 26 limitation applies equally to the corresponding limitation of claim 27. art would have known that tire pressure sensors typically are programmed at the factory with a single ID. Furthermore, even if assuming for the sake of argument that Petitioner’s assertion is correct, the Petition fails to explain adequately how or why one of ordinary skill in the art would have modified the combination of Tang and Lemense to store only the old identification in the old tire pressure detector.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,031,064 - Elmos Semiconductor SE v. Texas Instruments IncorporatedInstitution deniedPTAB · Nov 5, 2024 · IPR2024-00802 · APJ Bach V Hoang · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any of claims 1–20 would be unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“An inter partes review may not be instituted unless “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). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has not shown a reasonable likelihood it would prevail in establishing the unpatentability of any of the challenged claims. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that “a person having ordinary skill in the art (‘POSITA’) at the relevant time, would have had at least a bachelor’s degree in electrical engineering, or equivalent experience of at least two years working in the field of the design electrical driver systems for Light Emitting Diodes (LEDs).” Pet. 20. Patent Owner has not addressed the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as articulated above. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ432 Patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that the open-ended language “at least” expands the range of education and experience indefinitely with no upper bound. Therefore, we do not adopt this aspect of Petitioner’s formulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the record before us, we do not find it necessary to expressly construe any claim terms or phrases to reach our decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “only to the extent necessary to resolve the controversy” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). Petitioner’s constructions do not affect our determinations, and, even under Petitioner’s constructions, Petitioner fails to show a reasonable likelihood of success with respect to its proposed grounds of unpatentability for the challenged claims of the ’432 Patent.” slip op. at 10
- BurdenNot shown unpatentable
“First, even under Petitioner’s assertion that “controller RG . . . performs the functions of an error amplifier and amplifier output stage” (id. at 37), Petitioner has not adequately shown that controller RG meets all three of “an error amplifier,” “a control voltage,” and “an amplifier output stage.” Petitioner’s assertions that those elements are “interior to” or “include[d]” in controller RG are conclusory and unsupported. Petitioner summarizes and reproduces portions of Sudhaus regarding the output currents of controller RG, but has not explained the relevance of its summary and reproduction with respect to each recited claim element. See id. at 37–38 (citing Ex. 1005, 2:32–33, 4:25–28, 4:46–50, 8:47–55), 40– 41. Nor has Petitioner explained why or how the summarized or reproduced portions of Sudhaus show that those claim elements are interior or included in controller RG. See id. Further, Petitioner also fails to show how Sudhaus teaches the claimed interactions and relations between the error amplifier, control voltage, and amplifier output stage. The claim recites the error amplifier compares voltages to “generate a control voltage” and the amplifier output stage controls output current “based on the control voltage.” Petitioner has not explained what specific signal controller RG generates that teaches a “control voltage” used to control output current. Nor has Petitioner stated, let alone explained how, controller RG generates a control voltage in the claimed manner and controls output current based on that control voltage. Simply because controller RG produces outputs that are allegedly similar to the claimed outputs does not by itself show that controller RG produces the claimed outputs using the claimed elements in the claimed manner.” slip op. at 16
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 11,653,432 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2024-00145 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. 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 11
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We determine that Patent Owner has not shown that it is entitled to the presumption of nexus. That is, Patent Owner has not shown that product “is the invention disclosed and claimed.” Fox Factory, 944 F.3d at 1374 (quoting Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). Petitioner is correct that Patent Owner did not discuss in its Patent Owner Response whether the claims of the ’407 patent are coextensive with the DoDots patent. We examine Patent Owner’s contentions in its Sur-reply of coextensiveness, including Patent Owner’s contention that “[t]he ‘gist’ of the inventions centered around the NIM template” (PO Sur-reply 23), to determine if the DoDots product was coextensive or, even if not, if “the unclaimed features amount to nothing more than additional insignificant features,” in which case the presumption of nexus may still be appropriate. See Fox Factory, 944 F.3d at 1373 (“Although we do not require the patentee to prove perfect correspondence to meet the coextensiveness requirement, what we do require is that the patentee demonstrate that the product is essentially the claimed invention.”); Teva Pharms., 8 F.4th at 1361–63 (discussing the “spectrum” of coextensiveness, from one in which unclaimed features are insignificant, which might not disturb the presumption, to one in which a critical feature is unclaimed, which would not show coextensiveness). We determine that the record evidence shows that at least the feature of the “developer ecosystem” was significant and not coextensive with the claims. John Kembel’s testimony describes “a whole developer ecosystem” including a “dev Dot” that allows “web developers to become Dot developers.” Ex. 1031, 59:2–17. Patent Owner contends that NIMs and NIM templates, as claimed, are the only critical features of the DoDots products, but the testimony of John Kembel confirms the criticality of the developer ecosystem: “[Y]ou could collect Dots, you could share Dots, you could organize them into packs based on your different work products, but the gist and the magic of the invention really comes down to the concept of a Dot, the Dot definition, and the server infrastructure that enabled those to be defined, collected, developed, and distributed.” Id. at 19:16–22 (emphasis added); see Ex. 2021 ¶¶ 36–43; Ex. 2027, 6 (discussing the “DevDot”); Ex. 2029.” slip op. at 33
- Obviousness (§103) › Objective indicia / secondary considerations › Long-felt need / failure of othersObjective indicia outweighedDecided for petitioner
“art had a recognized need for a solution to the problem, and that others had tried and failed to find a solution to that problem. Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1369 (Fed. Cir. 2017). We have reviewed the cited evidence presented by Patent Owner, and find that it does not evince strong evidence of a long-felt but unsolved need that Patent Owner contends was addressed by the DoDots products.” slip op. at 34
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 22, 2024 · IPR2023-00701 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–24 are unpatentable: claims 1–4, 7–11, 13–16, and 19–23 as obvious over Brown; claims 5, 6, 17, and 18 as obvious over Brown and Beer.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01279 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, or a related field and have three or more years of corresponding industry work experience. PO Resp. 9 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 10–11. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 9) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 13. In the -01279 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–20. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “client computing device” Patent Owner requests construction of the term “client computing device.” PO Resp. 9–10. We do not construe this claim term because its construction is not necessary to resolve the controversy before us. 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 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“As noted above, our construction requires “a fully configurable frame, with one or more controls, through which content is presented to the user.” We decline to adopt the construction Patent Owner urges—that the content presented to the user must itself be fully configurable. See PO Resp. 38–39. Rather, our construction derives from language in the specification, which is immediately followed by language describing the advantage of a fully configurable frame: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:21–28; Ex. 1012, 9–10 (citing Ex. 1001, 5:21–24). Patent Owner itself quotes a portion of the specification that describes the “shortcomings” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and developers “have limited control over the user experience” (Ex. 1001, 2:3–29 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01279 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:24–28). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’407 patent specification’s disclosure that “[t]he developer has full control over all aspects of the appearance and functionality of NIM frame.” PO Resp. 38 (quoting Ex. 1001, 17:32–43). However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance and operation of the NIM frame, not the content. Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 106. We find persuasive, and credit, Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars, and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). This testimony is supported by the cited teachings and is consistent with our claim construction.” slip op. at 17
Patent outcomesUS 8,510,407 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,510,407 - Samsung Electronics Co., Ltd. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2024-00143 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. 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 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“networked information monitor” Our determination is that Petitioner has shown by a preponderance of the evidence that Brown’s desktop component teaches or suggests a NIM in accordance with our claim construction of that term. Our construction requires “a fully configurable frame” and we decline to make the determination that Patent Owner urges, that the construction requires that the content presented to the user must be fully configurable. See PO 36–37. Rather, the construction derives from the specification, immediately followed by the language: “[t]he fully configurable frame utilized in accordance with the invention stands in contrast to present web browsers, which are branded by the browser vendor and which have limited means by which to alter the controls associated with the browser.” Ex. 1001, 5:44–48 (using the term “Application Media Package,” which is synonymous with NIM (PO Resp. 4–5)); Ex. 1012, 9–10 (citing Ex. 1001, 5:40–43). Patent Owner itself quotes a portion of the specification that describes the “limiting factors” (PO Resp. 4) of prior art browsers, namely “controls associated with a browser are not fully configurable” and prior art browsers “provide very limited control to a user or content provide[r] to alter the frame and controls provided by the browser window” (Ex. 1001, 2:47, 2:57–59 (quoted at PO Resp. 4)). The Federal Circuit also quoted the language contrasting the “fully configurable” NIM with then-current web browsers (branding and limited alteration of browser controls) in its decision affirming the claim construction of “NIM template” in the -01278 IPR. Ex. 1014, 3 (quoting language from a related patent that is substantively identical to Ex. 1001, 5:44–48). Patent Owner’s argument regarding the configurability of the presented content (as opposed to the frame) asks us to consider the ’083 patent specification’s disclosure that “frame shape and content may be wholly defined by the Dot developer.” PO Resp. 36–37, citing Ex. 1001 10:55–57. However, we do not agree that this statement requires that the developer of the NIM must be able to make the content within the frame appear “differently” from the source, as argued; rather, in context, this statement again relates to the appearance of the frame. In particular, we find the word “frame” in the phrase “frame shape and content” modifies both “shape” and “content,” so that the phrase refers to both the shape and the content of the frame, rather than to frame shape and, separately, the content presented within the frame. See Ex. 1001, 10:46–55 (“The frame . . . defines that area . . . in which data may be rendered [and] may contain rendered Internet data . . . . The appearance of the frame (if any) together with data that is displayed therein is the visible instantiation of the [NIM]. Any Internet data or media data may be contained within the frame.”). Neither Patent Owner nor its declarant provides any additional discussion or support for the assertion that the content received from a website (if that is the content presented in the frame) must be capable of being displayed differently than on the website. Ex. 2010 ¶ 109. slip op. at 15
Patent outcomesUS 8,020,083 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,083 - Samsung Electronics Co., Ltd. / Apple Inc. v. Dodots Licensing Solutions LLCAll claims unpatentablePTAB · Oct 9, 2024 · IPR2023-00621 · APJ Sharon Fenick · IPR · Final written decision
Claims 1–16 are unpatentable: claims 1–5 and 9–13 as obvious over Brown, and claims 6–8 and 14–16 as obvious over Brown and Wecker.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“A person of ordinary skill (“POSITA”) relating to the subject matter of the ’083 Patent would have had (1) a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least three years of corresponding industry work experience. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 5 (citing Ex. 1003 ¶¶ 20–21). Patent Owner, citing our prior decision in the -01278 IPR and the declaration testimony it submitted of Dr. Ted Selker (Ex. 2010), states: A POSITA would have a bachelor’s degree in Computer Engineering, Computer Science, Electrical Engineering, or a related field and have three or more years of corresponding industry work experience. PO Resp. 8 (citing Ex. 1012, 8; Ex. 2010 ¶¶ 24–25). The parties have not addressed the differences in these definitions. We adopt Patent Owner’s formulation of the level of skill in the art, but on the present record we would reach the same determination under Petitioner’s formulation of the level of skill.” slip op. at 8
- Prior constructionPrior construction adoptedDecided for patent owner
“of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a fully configurable frame, with one or more controls, through which content is presented to the user.” Ex. 1012, 9–10. Both Petitioner (Pet. 3–4) and Patent Owner (PO Resp. 8) agree with this construction, and we adopt it herein. 2. “networked information monitor template” The term “networked information monitor template” (“NIM template”) also appears in each of independent claims 1 and 9. In the -01278 IPR, we construed this term as meaning “a data structure that defines the characteristics of a NIM, including the NIM frame, view, and control characteristics, and that excludes executable applications/compiled code.” Ex. 1012, 11–19. This construction was affirmed by the Federal Circuit. Ex. 1014, 5–9. Both Petitioner (Pet. 4–5) and Patent Owner (PO Resp. 9) agree with this construction and we adopt it herein.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “execute the template” and “client device” Patent Owner requests construction of the terms “execute the template” and “client device.” PO Resp. 9–10. We do not construe these claim terms because their construction is not necessary to resolve the controversy before us. 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 10
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“We instead credit Dr. Schmidt’s testimony that Brown’s desktop components are fully configurable frames because Brown describes that the desktop components may be positioned at any location on the desktop and can be resized, and Brown presents examples of desktop components with different frame controls, in its depiction of two desktop components, one with horizontal and vertical scroll bars and one with no such controls. Ex. 1003 ¶ 51 (citing Ex. 1005, 7:24–26, 12:64–65, Fig. 3A (elements 306, 310)). Additionally, we also do not find compelling Patent Owner’s argument that our construction of “a fully configurable frame with one or more controls . . .” requires “configurable control(s)” and that the controls identified in Brown are not sufficiently configurable to meet this requirement. PO Resp. 38. Rather, we understand portions of the ’083 specification cited by Patent Owner to describe, again with reference to then-current browsers, the problem of configurability relating to the appearance of the frame and the restrictions on the controls of the frame – that the vendor of the browser brands the browser in which content appears and regulates the controls associated with the frame. See, e.g., Ex. 1001, 2:45–49 (cited at PO Resp. 38; Ex. 2010 ¶ 111), 2:50–59 (“There is a growing desire for content providers to . . . fully brand and control the frame in which the content appears.”). For the same reason, we do not agree with Patent Owner that all data related to a control must be present in the NIM template, rather than elsewhere, for a frame to be fully configurable. See PO Resp. 39–40. Thus, we determine that the availability of different controls to the developer of a NIM (e.g., horizontal and vertical scroll bars if desired, as in Brown, Fig. 6A), teaches or suggests the “one or more controls” as required by our claim interpretation of a NIM. For similar reasons, we credit Dr. Schmidt’s testimony that a “fully configurable” frame is one in which the developer “can specify frame characteristics and controls,” Ex. 1003 ¶ 51 (emphasis added), as it is consistent with the descriptions in the specification, as noted above. In contrast, also in light of the descriptions in the specification, we give less credit to Dr. Selker’s testimony that “fully configurable” requires that the content presented to the user must be modifiable, that the controls must be developed by the NIM developer and implemented in the NIM template, and that setting position, size, or scrolling could not be a frame control. Ex. 2010 ¶¶ 109, 110, 113, 114.” slip op. at 17
Patent outcomesUS 8,020,083 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,020,083 - PTAB · Sep 13, 2024 · IPR2024-00619 · APJ Andrew L Nalven · IPR · Institution
Instituted IPR of claims 1–8 on all asserted grounds; the Board found compelling evidence that claims 1 and 6 would have been obvious over Yu and Acharya.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5, overall, favors exercising our discretion to deny institution of an inter partes review. The sixth Fintiv factor takes into account other circumstances that may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. Under this factor, if we determine that the other Fintiv factors favor discretionary denial, as we do here, we must also consider whether the Petition presents compelling merits. CommScope, Paper 23 at 5. As discussed above, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. Accordingly, we first discuss the merits of the Petition. We then discuss our conclusion that the merits are compelling.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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 that follow, we institute an inter partes review.” slip op. at 2
- BurdenOther
“we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 24
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“application on April 11, 2013. Ex. 1004, codes (22), (43). The ’383 patent issued on August 7, 2018, and the earliest claimed priority date for the ’383 patent is March 28, 2013. Ex. 1001, codes (45), (63), (30). Thus, Acharya qualifies as prior art under § 102(a)(2) because it was filed on October 5, 2011, and thus was “effectively filed before the effective filing date” of the ’383 patent. Despite the Petitioner’s citation to the wrong sub-part of section 102, we agree with Petitioner that the Petition sufficiently provides notice to Patent Owner of the basis of the challenge. As noted above, the Petition sets forth the evidence necessary to establish that Acharya is prior art under section 102(a)(2) by noting that Acharya’s application was filed before the earliest priority date of the ’383 patent. Pet. 5 (“[T]he earliest priority date of the ’383 patent is March 28, 2013 . . . Acharya . . . was filed on October 5, 2011 and published on April 11, 2013.”). This information is relevant only to an assertion of prior art under § 102(a)(2), not § 102(a)(1). The Petition further includes argument, with citations to the prior art and evidence, as to how the prior art renders each challenged claim unpatentable. Pet. 25–70. Patent Owner does not dispute that Acharya is prior art under 35 U.S.C. § 102(a)(2), nor does Patent Owner assert that the Petition failed to set forth with particularity how the challenged ground addresses each claim element. See generally Sur-Reply. Based on the evidence presented in the Petition (Pet. 5, 25–70), we determine that the Petition sufficiently articulates, with particularity, the evidence that supports the grounds for the challenge to each claim.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,045,383 - PTAB · Sep 10, 2024 · IPR2024-00607 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution for claims 1–4 because the Fintiv factors favored discretionary denial and the petition did not present compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“As discussed above, Fintiv factors 2, 3, and 5 favor denial. Factor 1 is neutral, and only factor 4 weighs against denial. Thus, we determine that the first five Fintiv factors favor discretionary denial, and we now assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). According to the Guidance Memo, the compelling merits standard is met when “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. A challenge can only meet this standard “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021- 01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”). We note that the Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“For the reasons that follow, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“c. Summary In view of the foregoing, we determine that Petitioner’s obviousness challenges based on Lee do not meet the compelling merits standard with respect to claim 1. Petitioner does not rely on Kim to teach the recited “predetermined time from the transmission of the deactivation message.” See Pet. 34–37, 48–55 (relying on Kim for limitation “stopping downlink (DL) transmission of the secondary carrier and initializing uplink (UL) and DL retransmission buffers after transmitting the deactivation message”). Claims 2–4 depend from claim 1. Petitioner’s contentions regarding these dependent claims rely on the same analysis for the limitation of claim 1 discussed above. See Pet. 55, 57, 60. Accordingly, we also determine that Petitioner’s obviousness challenges based on Lee do not meet the compelling merits standard with respect to claims 2–4.” slip op. at 30
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,144,106 - PTAB · Sep 3, 2024 · IPR2024-00608 · APJ Amber L Hagy · IPR · Institution
The Board denied institution on claims 1–4 under § 314(a), finding the Fintiv factors favored denial and the Lee-Kim obviousness challenge lacked compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, we must address the merits of the Petition to determine whether they are compelling. The Guidance Memo states that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo, 4. A challenge can meet this standard only “if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021- 01064, Paper 102 at 49 (PTAB Oct. 4, 2022) (precedential) (“OpenSky”). The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors, and such challenges will be allowed to proceed even if a district court litigation is proceeding in parallel. Id.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“review. 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.” Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons that follow, we exercise our discretion to deny institution of inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As noted above, our inquiry is directed to whether the Petition meets the compelling merits standard, not the “reasonable likelihood” standard of § 314(a). On this record, we agree with Patent Owner. Claim 1 recites “changing the secondary carrier to a deactivation state based on a predetermined time from the transmission of the deactivation message.” To illustrate, Figure 10 of the ’662 patent is reproduced below. Figure 10 is a diagram of a carrier state management method. Ex. 1001, 4:49–50. The ’662 patent teaches that “the base station performs the step . . . of transmitting the deactivation message to the terminal at a time t1.” Id. at 13:50–52. The ’662 patent further teaches that “[t]he base station may perform the step . . . of changing state information for a secondary carrier that is managed by the base station to the deactivation state at a time t5 after the lapse of a predetermined time (t5–t1).” Id. at 13:60–63. As discussed above, Petitioner argues that Lee’s disconnection time corresponds to the recited “predetermined time.” Pet. 43. To satisfy the limitation of claim 1 under this theory, Petitioner must show that Lee’s disconnection time is the time from the transmission of the AAI_CM-CMD” slip op. at 30
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,565,662 - Assa Abloy AB / Assa Abloy Inc. et al. v. CPC Patent Technologies Pty, Ltd.No claims unpatentablePTAB · Aug 13, 2024 · IPR2022-01006 · APJ Barry L Grossman · IPR · Remand
The Board revised the construction of “biometric signal” on remand, then held that Petitioner did not prove claims 1–17 unpatentable under the asserted obviousness grounds.
RulingsRemand decision- RemandOther
“vacated following review by the Director and remanded to us: (1) for additional briefing by the parties on the construction of the claim term “biometric signal;” and (2) our further consideration of the construction of this claim term. Paper 49 (“Director’s Decision” or “Dir. Dec.”).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Upon further consideration of the claim construction for the term “biometric signal,” based on the supplemental briefing of the parties, and other evidence of record, we revise the construction of this term to be “a physical or behavioral biometric attribute.” There is no persuasive intrinsic or extrinsic evidence to support Patent Owner’s assertion that a biometric” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”).” slip op. at 56
- Expert testimonyPetitioner expert discountedOther
“(‘POSITA’) at the time of the alleged invention would have had at least an undergraduate degree in electrical engineering, or equivalent education, and at least two years of work experience in the field of security and access-control.” Pet. 9 (citing Ex. 1005 ¶ 30). Mr. Lipoff’s cited testimony merely repeats, verbatim, Petitioner’s asserted level of ordinary skill, preceded by the phrase “In my opinion.” Ex. 1005 ¶ 30. Mr. Lipoff does not provide any facts or data to support his conclusory opinion. Accordingly, we give it minimal probative weight. 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.”).” slip op. at 56
Patent outcomesUS 9,665,705 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,665,705
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.