- PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- 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 satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. 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
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507 - PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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 demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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 terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - PTAB · Jul 24, 2024 · IPR2024-00477 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–7 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). 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 demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“does not provide any authority supporting its position that failure to provide a Sotera stipulation “neutralizes” or “undercuts” the impact of a stay. We also disagree with Patent Owner’s suggestion that a district court stay can make discretionary denial inappropriate only when coupled with a Sotera stipulation. See Prelim. Resp. 59. Again, Patent Owner does not provide any authority supporting this position. Id. Contrary to Patent Owner’s positions, Fintiv indicates a district court stay “has strongly weighed against exercise of the authority to deny institution” independent of whether a Sotera stipulation—or any other type of stipulation—has been submitted. Fintiv at 6.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any other 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
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,336,260 - PTAB · Jul 16, 2024 · IPR2024-00402 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–4 and all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on the Lee anticipation challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), 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.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’958 patent. Thus, we institute this inter partes review.” slip op. at 2
- Skill levelSkill level board ownOther
“We find Patent Owner’s proposed “wireless communications” is more consistent with the ’958 patent than Petitioner’s proposed “telecommunication,” which encompasses a variety of technologies including, e.g., landline and wireless telephones, cable, and satellite. See Ex. 1001, 1:11–62 (describing the invention in terms of wireless communications). We therefore adopt a modified version of Petitioner’s proffered level of ordinary skill in the art, substituting “wireless communications” for “telecommunication.” The parties rely on expert testimony for their respective positions relating to the number of years of experience needed to attain ordinary skill, but neither expert cites supporting evidence for their testimony. See Ex. 1002 ¶ 33; Ex. 2002 ¶ 15. Our decision to institute would be the same regardless of whether the length of experience is two years or three. If the parties believe the proposed differing lengths of experience would affect the analysis of patentability in this case, they should address that issue at trial and cite to evidence in the record to support their positions.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner expressly construe any claim terms. See Pet. 8; Prelim. Resp. 19. We preliminarily determine that no claim construction is necessary for our decision to institute an inter partes review apart from that discussed in our analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only terms in controversy must be construed “and only to the extent necessary to resolve the controversy”) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“(a) Limitation [1c]: Petitioner’s Contentions We begin our analysis on disputed limitation [1c]. Limitation [1c] recites “upon a change of a second type SIB whose associated information indicated before the change that the second type SIB was provided on-demand, to include in the first type SIB the information associated with the second type SIB indicating that the second type SIB is provided by broadcast.” Petitioner contends that limitation [1c] is disclosed or suggested by” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,841,958 - PTAB · Jun 26, 2024 · IPR2023-01116 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on all challenged claims based on two §103 grounds: Patten, Ben-Rubi, and AAPA; and those references with Plotnick.
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 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the ’302 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“35 U.S.C. § 103 requires resolving the level of ordinary skill in the pertinent art at the time of the effective filing date of the claimed invention. Graham, 383 U.S. at 17. The person of ordinary skill in the art is a hypothetical person who knows the relevant art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors in determining the level of ordinary skill in the art include the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. One or more factors may predominate. Id. Petitioner contends that person of ordinary skill in the art “would have held a bachelor’s degree in electrical or computer engineering or a related field (or equivalent understanding through actual work experience), and had at least two years of experience related to multimedia systems such as video and audio systems.” Pet. 9 (citing Ex. 1003 ¶¶ 1–10, 22–23). Patent Owner does not propose a level of ordinary skill. See generally Prelim. Resp. Based on a review of the preliminary record, for purposes of the Institution Decision, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’302 patent specification, except that we delete the experience.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed board ownOther
“supply broadcast digital video/audio programmes having therein periodic breaks for the insertion of advertisements.” See Pet. 11. Petitioner lists the corresponding structure as “hard disc 62 in PVR 60 with a part that stores programme database 80.” Id. (citing Ex. 1002 ¶ 82; Ex. 1001, 4:57–62). But that cited disclosure states that “programme database 80 . . . stores the broadcast programme segments.” Id. at 4:59–60. This storage does not clearly link database 80, which “stores the broadcast programme segments,” as corresponding to the “supply means” of the programmes. Rather, the specification indicates that “the broadcaster broadcasts the programme with its interleaved advertisements,” indicating that a broadcaster is the source (i.e., “supply means”) of the programme and advertisements. See Ex. 1001, 5:33–34 (emphasis added). Even though Petitioner’s proposed claim construction points to portions of the PVR as part of the supply, the Petition also indicates that the Applicant admits that “[t]he prior art ‘PVR receives broadcast digital television and audio signals from an aerial 20,’ . . ., and that ‘the connections to an aerial 20, a modem 22 and the Internet 24 are as in the prior art.’” Pet. 18 (quoting Ex. 1001, 1:65–67, 4:44–45; Ex.1003 ¶ 35). In any event, as discussed below, Petitioner shows that Patten discloses the supply means as a hard disk, which is consistent with the district court construction (and possibly with the ’302 patent), and also that television broadcasters supply broadcast television, at least the latter of which is consistent with the AAPA and the ’302 patent. To the extent there is a controversy, the parties should clarify the construction of “programme supply means” and other terms discussed below during the trial. claims 1 and 12, Petitioner contends that the corresponding structure is “hardware and/or software arranged to perform steps 102, 104, and 112 of FIG. 8 of the ’302 Patent, as described at 6:40–62 and 7:17–27 of the specification.” Pet. 12. Tracking the claim language in limitations 1.i and 1.h, Petitioner identifies two recited functions of the “control means” as follows: “read said first field and said clock signal and said rules database and to apply said local broadcasting time regulation to each advertisement before said advertisement is shown”; and “update the second field in the header of said advertisement when said advertisement is again shown during time-shifted viewing.” See id. at 12–13. However, it is not clear on this preliminary record if steps 102, 104, and 112 of Figure 8 represent (algorithmic) structure clearly linked to recited functions of the control means. First, steps 102, 104, and 112 of Figure 8 appear to include additional functionality not required by claim 1. See Ex. 1008, Fig. 8 (Step 102 describing a “mix of adverts”; step 112 describing “record any key depressions”), 7:17–17 (describing other functionality not required by the claim 1). Second, to the extent the process flow of Figure 8 also represents some algorithmic structure, it remains unclear on this preliminary record as to how much of any such structure is clearly linked to the recited functions of claim 1––as opposed to the unclaimed functionality described in Figure 8. At this preliminary stage, we construe the corresponding structure as PVR hardware and/or software arranged to perform the recited functions of (1) to read said first field and said clock signal and said rules database; (2) to apply said local broadcasting time regulation to each advertisement before said advertisement is shown; and (3) to update the second field in the header of said time-shifted viewing. In other words, it does not appear on this preliminary record that the specification clearly links specific hardware and/or software to these claimed functions, other than generally disclosing a PVR, which Petitioner also points to as corresponding structure. See Pet. 17–18 (pointing to the disclosed AAPA PVR and other known hardware items as represented in Figure 1 as performing “nearly all of the claimed features”); Ex. 1001, 4:43 (describing “a PVR 60 for use in a system according to the invention” according to Figure 4 (described above)). slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner sufficiently shows that Patten employs metadata for storing various attributes or rules for advertisements, Ben-Rubi teaches headers for advertisements, Patten and Ben-Rubi track the number of times an advertisement was shown, and headers with different data fields for storing metadata were well-known as efficient mechanisms for reducing processing time and organizing data. On this preliminary record, Petitioner at least shows that using the well-known advertising metadata header data scheme of Ben-Rubi and including multiple data fields in Patten’s similar system of storing different types of advertising metadata was a “suitable option” for storing and organizing data for video streams, and in addition, would have provided known benefits. See Intel Corporation v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. March 13, 2023) (reversing the Board because “contrary to the Board’s suggestion, Intel never had to show that replacing Kabemoto’s secondary cache with Bauman’s secondary cache was an ‘improvement’ in a categorical sense,” rather, “Intel just had to show that Bauman’s secondary cache was a ‘suitable option’ to replace Kabemoto’s secondary cache.” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 800 (Fed. Cir. 2021)). Based on the foregoing discussion, on this preliminary record, Petitioner’s showing as to limitation 1.e is sufficient.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,392,302 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 22, 2024 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–13 and 16 on all petitioned grounds after finding a reasonable likelihood that claim 1 is obvious over Fells.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (vacating a Board decision denying institution where the examiner considered references but never provided any discussion, analysis, or other findings, and the petition provided a sufficient argument on the merits, which the examiner misapprehended or overlooked). Here, in evaluating Becton, Dickinson factor (c), we determine that the Examiner’s reasoning with respect to Fells and Cook is not well developed and neither reference was the basis for a rejection. We also determine, for reasons we discuss more fully below, that InductEV has shown that the Examiner materially erred by overlooking at least the teachings of Fell as applied to claim 1 (Becton, Dickinson factor (e)), and that the Petition presents additional evidence and facts, including testimony by Dr. Allen, that warrant reconsideration of Fells (Becton, Dickinson factor (f)). See infra Section IV.C. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms. Pet. 6 (citing Ex. 1003 ¶¶ 62–63); Prelim. Resp. 5–6. We agree that, for this decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - PTAB · May 21, 2024 · IPR2024-00093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding compelling evidence that Hirler anticipates claim 1.
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. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). We may institute review, however, only upon a determination that “there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). Applying that standard, for reasons set forth below, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Id. at 5–6. In evaluating these factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. We also apply additional guidance issued by the Director on the application of the Fintiv factors. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022).12 The Fintiv Memo states that “to benefit the patent system and the public good, the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Id. at 2.” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“1. “the sidewalls of said trenches in said base layer” Petitioner requests an express construction of a single claim term, namely, the term in claim 1 that specifies “the sidewalls of said trenches in said base layer.” Pet. 17. We agree with Patent Owner that no express construction of that term is necessary to resolve whether to institute review. See Prelim. Resp. 4 (arguing that this term “has no apparent relevance to any of the asserted prior art grounds”). We thus decline to expressly construe the term at this stage of the proceeding. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (claim terms are construed only to the extent necessary to resolve the controversy).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Accordingly, on this record, we preliminarily determine that the phrase “lateral contact layer” does not require “a dopant concentration between P and P+ (P* doping) for an N-channel MOSFET or between N and N+ (N* doping) in a P-channel MOSFET.” Prelim. Resp. 8. b. Dopant Implantation We next consider Patent Owner’s view that “the lateral contact layer” of claim 1 requires “a region of dopant which is implanted into sidewalls of the source contact trenches.” Prelim. Resp. 8. We discern no words in claim 1, and the parties identify none, that even remotely touch upon a requirement related to dopant implantation. See id. at 7–8; Ex. 1001, 5:37– 6:17 (claim 1). Patent Owner argues that the written description “makes clear that the lateral contact layer is implanted into the sidewall of the source contact trenches.” Prelim. Resp. 7. However, by way of support, Patent Owner again merely directs the Board to written descriptions of embodiments of the invention. See id. at 7–8 (highlighting portions of the specification that describe embodiments of the invention). Patent Owner does not argue that the phrase “lateral contact layer” is” slip op. at 12
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,629,634 - PTAB · May 21, 2024 · IPR2024-00094 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on claims 1–6 and all asserted grounds, finding a compelling and reasonably likely obviousness challenge to claim 1 over Kobayashi and Hshieh.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”), “at the filing date of the ’409 [p]atent[,] would have a master’s degree in electrical engineering, and at least two years of relevant work experience in the field of integrated circuit design and manufacturing.” Pet. 13 (citing Ex. 1003 ¶ 52). Patent Owner does not dispute Petitioner’s proffered level of ordinary skill in the art. See generally Prelim. Resp. 6 Hshieh et al., US 5,763,914, issued June 9, 1998. Ex. 1006 (“Hshieh”). We adopt Petitioner’s proffered level of ordinary skill in the art, which is supported by declaration testimony and consistent with the ’409 patent and prior art of record. See Ex. 1001, 1:6–3:8 (describing the invention and related art in terms of integrated circuit design and fabrication).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Based on the preliminary arguments and evidence, we disagree with Petitioner’s proposed construction requiring the corners to be rounded via a particular process because it improperly imports a process of manufacture from the Specification into apparatus claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 799 (Fed. Cir. 2019) (citing Vanguard Prods. Corp. v. Parker Hannifin Corp., 234 F.3d 1370, 1372–73 (Fed. Cir. 2000) (“Generally, ‘[a] novel product that meets the criteria of patentability is not limited to the process by which it was made.’”)). We also preliminarily disagree with Petitioner’s assessment of the prosecution history, i.e., that the claims were amended to distinguish the claimed rounded corners from 7 Pfirsch et al., US 6,541,818, issued April 1, 2003. Ex. 1011. Pfirsch’s rounded corners. Indeed, both the Examiner found and Patent Owner admitted that Pfirsch has the recited “rounded corner[s].” See Ex. 1002, 237, 302. Patent Owner appears, at this stage, to be correct that the claims were amended to include a “circular” contact to distinguish over Pfirsch’s square contact. See id. at 295, 302.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree at this stage. Petitioner’s rationale for combining Kobayashi with Hshieh is not solely based on Hshieh’s top view rounding being well known. Rather, Petitioner’s rationale is clearly based on express teachings in Hshieh about the benefits of top view rounding. See Pet. 54, 59 (citing Ex. 1006, 5:3–17, Figs. 6A–8B; Ex. 1003 ¶ 137); Ex. 1003 ¶¶ 122, 133. For example, Petitioner and its declarant refer to Hshieh’s teaching at column 5, lines 3–17, which states, “[i]n order to prevent the corner vulnerability where punch through weak points may be formed at the sharp corners due to a three-dimension diffusion effect . . . , the sharp corners of the polysilicon openings can be either blunted or rounded.” See Pet. 59; see Ex. 1003 ¶ 137. Accordingly, at this stage, we find that Petitioner has sufficiently articulated a motivation to combine the top view rounding of Hshieh with Kobayashi.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundInstituted
“Next, Patent Owner argues that Hshieh teaches non-orthogonal parallelogram-shaped cells to increase cell packing density and “specifically identifies square cell configurations as having disadvantageous packing densities.” Prelim. Resp. 23. Patent Owner argues that Hshieh therefore “plainly teach[es] away from combining Hshieh with Kobayashi in the manner claimed.” Id. We do not agree at this stage. Although Hshieh teaches that non- orthogonal cells are preferable over square cells, Patent Owner has not pointed out anything in Hshieh that would “criticize, discredit, or otherwise discourage” modifying Kobayashi’s square cells to have rounded corners. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); see also DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not teach away . . . if it merely expresses a general preference for an alternative invention . . . .”). Thus, we find nothing in the preliminary record to suggest that Hshieh teaches away from the combination.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,812,409 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for this decision. 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654
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.