- CSC Serviceworks, Inc. v. Payrange Inc.InstitutedPTAB · Jan 19, 2024 · IPR2023-01186 · APJ Meredith C Petravick · IPR · Institution
The Board instituted IPR on claims 1–26 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Low.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“interest. Prelim. Reply 1–7. And, argues that “there is no reason for the Board to address PayRange’s RPI argument at institution because no time-bar or estoppel issue exists.” Id. at 2–3 (“To date, PayRange has not asserted the ‘045 patent against Kiosoft or TechTrex, and thus no time bar ever triggered under § 315(b) based on separate litigation between PayRange and Kiosoft/TechTrex.”). iRobot Corp., IPR2020-00734, Paper 11 (PTAB Oct. 6, 2020) (“SharkNinja”) held that it best serves the Office’s interests in cost and efficiency to not resolve an RPI issue when “it would not create a time bar or estoppel under 35 U.S.C. § 315” in that proceeding. SharkNinja, Paper 11; see also Unified Patents, LLC v. MemoryWeb, LLC, IPR2021-01413, Paper 76 at (USPTO Director May 22, 2023) (non-precedential). We do not address whether KioSoft and TechTrex are unnamed real-parties-in-interest because, even if they were, it would not create a time bar or estoppel under 35 U.S.C. § 315.” slip op. at 7
- Strike new argumentDenied
“TPG, 40. The block quotation image on page 73 of the Petition contains approximately 105 words. On this record, whether or not Petitioner accounts for these words in its certification is unclear. In any event, Patent Owner does not allege that it has suffered any undue prejudice from the extra 102 words. Nor does Patent Owner indicate that it promptly raised the issue to allow for Petitioner to take reasonable steps to remedy the issue. Under the circumstances in this case, we are not persuaded the Petitioner is abusing the process by including excessive words in the image so as to warrant not considering the Petition. During trial, all future papers must comply with applicable word- count limits and the parties must avoid images of block quotations, so that the words of the quotation are included in word-count limits.” slip op. at 9
- Skill levelSkill level petitioner adoptedOther
“Patent Owner does not provide a description of the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’045 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Neither party provides an explicit construction of any claim terms. Petitioner asserts that “the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction.” Pet. 11. Patent Owner asserts that “no constructions are necessary to deny institution because the petition facially fails to show that the references satisfy the plain language of the claims.” Prelim. Resp. 6. Except to the extent as discussed in our patentability analysis below, we do not need to construe any terms explicitly to reach our 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,” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,856,045 - Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Dec 14, 2023 · IPR2023-00975 · APJ John D Hamann · IPR · Institution
The Board instituted review of claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 11
- Parallel petitionsDecided for petitioner
“We agree with Petitioner that under the circumstances of this proceeding, “[t]he potential priority dispute between the two parties justifies institution of the two petitions.” Notice 4. In particular, the CTPG “recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG, 59. The CTPG provides that a “patent owner may seek to avoid additional petitions by proffering a stipulation . . . that certain references qualify as prior art.” Id. at 61. Patent Owner makes no such stipulation here. See Prelim. Resp. 13–16.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt As adopted, we view the definition for the level of ordinary skill is consistent with the ’014 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 15
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014 - PTAB · Nov 29, 2023 · IPR2023-00904 · APJ Garth D Baer · IPR · Institution
The Board instituted review of claims 1–7, 9–18, and 20 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2022)6 (“Interim Procedure”) states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. As the Interim Procedure explains, such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner provides a Sotera stipulation. Ex. 1026. Specifically, Petitioner stipulates that if we institute review, “Micron will not seek resolution in the district court of the same grounds as set forth in the petitions or any grounds that Micron could have reasonably raised in the petition[].” Id. (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020)).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Here, General Plastic factors 1–5 weigh against denying institution. This is the first time this petitioner has challenged the ’527 patent. Pet. 90. The only connection Patent Owner alleges between this and previous petitioners challenging the same patent is that Petitioner’s law firm also represented one of the previous petitioners. Prelim. Resp. 12. That, however, is not the kind of relationship that might warrant denying a followon petition by a different petitioner. See Valve Corp. v. Elec. Scripting Prods. Inc., IPR2019-00062, Paper 11 at 9–10 (Apr. 2, 2019) (precedential) (exercising discretion to deny institution based on a different petitioner’s earlier-filed petition where the different petitioners were co-defendants in a related district-court litigation, and where both petitioners were accused of infringing the challenged patent based on the same product incorporating technology licensed from petitioner Valve). Because this Petitioner has not previously filed a petition and Patent Owner does not assert extenuating circumstances that might justify discretionary denial, see Prelim. Resp. 12– 14, factors 1–5 weigh against denying institution. See Alcatel-Lucent USA Inc. v. Oyster Optics, LLC, IPR2017-02146, Paper 12, 12 (Feb. 28, 2018) (“Once resolution of factor 1 indicates that Petitioner had not previously filed a petition against the same patent, factors 2–5 bear little relevance unless there is evidence in the record of extenuating circumstances.”). General Plastic factors 6 and 7 also weigh against denying institution. The four previous IPRs have all terminated due to settlement. See Pet. 89. Because this Petition is now the only IPR before the Board challenging the ’527 patent, we agree with Petitioner that this case provides an efficient means for resolving patentability within one year after institution and does so without unnecessarily straining the Board’s limited resources. See id. at 91. For these reasons, the circumstances in this case do not warrant denying the Petition under § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “no claim terms require a formal construction for purposes of addressing the Grounds in this Petition.” Pet. 3 Patent Owner does not contest Petitioner’s argument at this stage. We agree with Petitioner that we do not need to explicitly construe any terms to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, we determine that Petitioner has demonstrated a reasonable likelihood of success in proving that at least one of the challenged claims of the ’527 patent is unpatentable. We therefore institute trial on all challenged claims and grounds raised in the Petition. At this stage of the proceeding, we have not made a final determination as to the patentability of any challenged claim or as to the construction of any claim term. Any final determination will be based on the record developed during trial.” slip op. at 13
Claim constructionDiscretionary denialPatents in suitUS 6,920,527 - Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Nov 21, 2023 · IPR2023-00819 · APJ John D Hamann · IPR · Institution
Instituted IPR on claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds; the Board found a reasonable likelihood of prevailing and compelling merits for at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We have considered the circumstances and facts before us in view of Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system 6 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 13–14 (PTAB Dec. 1, 2020) (precedential). institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular,” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“After reviewing Petitioner’s arguments and evidence, which are not addressed by Patent Owner at this stage of the proceeding, we are persuaded that Petitioner demonstrates, for purposes of this institution decision, that Asano teaches “[a] multiprocessing system.” In light of our finding, we need not, and thus do not, reach whether claim 1’s preamble is limiting. 2. Multiple Processors Petitioner argues that the combination of Asano and Joy teaches “multiple processors mounted on a single die,” as recited in claim 1. Pet. 22–30. More specifically, Petitioner argues that Asano teaches “a computer system that includes a processor group 110 that includes multiple processors.” Id. at 22 (citing Ex. 1005 ¶¶ 30–31); see also id. at 22–23 (citing Ex. 1005 ¶ 31, Fig. 1 (annotating processors 11a, 11b . . . 11n); Ex. 1002 ¶ 73). As to Joy, Petitioner argues that Joy teaches having “multiple processors are mounted on a single die.” Id. at 23 (citing Ex. 1002 ¶¶ 74–75); see also id. (citing Ex. 1006, 7:4–6) (arguing same). Petitioner argues that one of ordinary skill in the art “would have been motivated in light of Joy to configure the system in Asano so that its multiple processors are ‘mounted on a single die.’” Id. According to Petitioner, “[s]uch an implementation would have been a straightforward combination of well-known technologies using known methods and would have had predictable results.” Id. at 23–24 (citation omitted). In particular, die in a multi-processor system (such as the system in Asano) were well known in the art before the ’014 patent.” Id. at 27 (citing Ex. 1002 ¶ 84); see also id. at 27–28 (citing Ex. 1008,8 1; Ex. 1009,9 Abstract; Ex. 1010,10 1:48–60; Ex. 1011,11 292); id. at 28–29 (citing Ex. 1001, 1:34–44, Fig. 2; Ex. 1002 ¶ 85) (arguing that the ’014 patent acknowledges that “using multiple processors mounted on a single die in a computer system as conventional and beneficial”). Moreover, Petitioner argues that one of ordinary skill in the art” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Nov 13, 2023 · IPR2023-00901 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds, finding a reasonable likelihood that the challenged claims would be shown unpatentable under the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary 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.” See 37 C.F.R. § 42.108 (2022). For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date of the claimed invention “would have had a Bachelor’s Degree in Electrical Engineering or Computer Science, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and/or graphical user interfaces, particularly as those systems relate to software applications used to interface with wireless earpieces.” Pet. 23 (citing Anthony Decl. ¶ 22). Patent Owner does not address this issue. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that no claim terms need to be construed. Pet. 12. Patent Owner does not address this issue. See generally Prelim. Resp. For this Decision, we do not address any claim construction issues.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Although the statement in the Petition of non-reliance on the filing dates of the Hensen Provisional and Hensen CIP was infelicitous, Petitioner’s sole reliance in the Petition on the filing date of the Hensen Patent met its initial burden of production in establishing that the Hensen 3 Petitioner also provides a chart comparing Hensen Patent claim 1 to the disclosures of the Hensen CIP. Reply 3–4. However, under the AIA, this is not necessary. See Penumbra, at 29–32. Petitioner also disputes that the asserted public disclosures that Patent Owner relies on pursuant to 35 U.S.C. § 102(b)(2)(B) were not by, or obtained from, the inventor, and further argues that some aspects of the subject matter of the Hensen Patent are the not the same as that of the earlier disclosures. Id. at 4–5. We need not address these arguments for purposes of this Decision. Patent was prior art. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Given Petitioner’s citation of the Hensen Patent and its filing date, the burden of production then shifted to Patent Owner to antedate the reference; upon the occurrence of which in the Preliminary Response, the burden of production returned to Petitioner to prove that the Hensen Patent was entitled to the benefit of an earlier filing date. Dynamic Drinkware, 800 F.3d at 1380. We authorized Petitioner to file a Reply to respond to Patent Owner’s assertion of priority, by which Petitioner asserted reliance on the Hensen Provisional and Hensen CIP filing dates. Ex. 1026. Thus, we determine that Petitioner has not waived reliance on those earlier filing dates. In addition, our review of the portions of the Hensen CIP referenced by Petitioner in its comparison to the disclosures relied on in the Hensen Patent (at Reply 2) reveals that they are substantially identical, notwithstanding Patent Owner’s unsupported attorney argument to the contrary. Patent Owner’s assertion regarding the disclosures of the Hensen Provisional compared to the Hensen Patent are also without merit given that the latter incorporates the Hensen CIP by reference. Ex. 1009 ¶ 36. Accordingly, having reviewed the Parties’ arguments and evidence in this present record, we determine Petitioner demonstrates a reasonable likelihood that the Hensen Patent is prior art pursuant to 35 U.S.C. § 102(a)(2).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,635,385 - PTAB · Nov 6, 2023 · IPR2022-01421 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–30, finding a reasonable likelihood that the challenged claims are obvious over the specified combinations of prior art.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Institution Decision and directed us to revisit our analysis regarding Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). Paper 14 (“Remand Decision,” “Remand Dec.”), 4–8. The Director agreed that our determination that the first part of the Advanced Bionics framework was met (id. at 5 (citing Orig. Inst. Dec. 9– 10)), but with respect to the second part of the Advanced Bionics framework, the Director stated: I find that Petitioner’s arguments and cited evidence establish that the Office erred in a manner material to patentability under the particular circumstances of this case. Specifically, Petitioner’s arguments and cited evidence establish there is substantial overlap in the subject matter described in the ’009 patent and the ’148 patent[1] (subject to the ʼ148 FWD)[2], generally, and the claimed subject matter recited by the challenged claims of the ’009 patent and of the ’148 patent, specifically. Remand Dec. 6 (citing Pet. 15–68; Ex. 1010; Ex. 2001). The Director further found that “the Office erred by overlooking the significance of the ’148 FWD as it pertains to the patentability of the claims of the ’009 patent.” Id. at 7. Lastly, the Director determined that, “under the specific circumstances of this proceeding, I find the second part of the Advanced Bionics framework is satisfied,” such that “the facts here do not warrant exercising discretion to deny institution under 35 U.S.C. §325(d).” Id. at 8. As such, given that the only discretionary issues argued by the parties were directed to denial under 35 U.S.C. §325(d) (see Pet.; Prelim. Resp.), we proceed to consider the merits of the grounds of unpatentability raised in the Petition. Further, as set forth below, we determine 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). Thus, we institute an inter partes review in this proceeding.” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’009 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–30 of the ’009 Patent on the following asserted grounds: Claims 1–5, 8–24, and 26–30 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, and Hayter; and Claims 6, 7, and 25 under 35 U.S.C. § 103(a) as unpatentable over Roese, Golnabi, Huima, Hayter, and Esbensen;” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, four years of industry experience and a working knowledge of packet-switched networking, firewalls, security policies, communication protocols and layers, and the use of customized rules to address cyber- 3 U.S. Patent Publication No. 2006/0048142 A1 (filed Sept. 2, 2004) (published Mar. 2, 2006) (Ex. 1005, “Roese”). 4 K. Golnabi et al., Analysis of Firewall Policy Rules Using Data Mining Techniques, 2006 IEEE/IFIP Network Operations and Management Symposium, NOMS 2006, 10th IEEE/IFIP, 305–315 (2006) (Ex. 1008, “Golnabi”). 5 U.S. Patent Publication No. 2004/0015905 A1 (filed Oct. 26, 2001) (published Jan. 22, 2004) (Ex. 1006, “Huima”). 6 U.S. Patent No. 7,320,022 B2 (filed July 25, 2002) (issued Jan. 15, 2008) (Ex. 1007, “Hayter”). 7 U.S. Patent No. 5,226,141 (filed Nov. 18, 1991) (issued July 6, 1993) (Ex. 1009, “Esbensen”). attacks.” Pet. 5 (citing Ex. 1003 ¶¶ 37). Patent Owner does not challenge the qualifications proposed by Petitioner for a person of ordinary skill in the art. See generally Prelim. Resp. At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, see Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this Decision.” slip op. at 7
- PTAB / AIA Trials › §315(e) estoppelDecided for patent owner
“Issue preclusion [(i.e., collateral estoppel)] is appropriate only if: (1) the issue is identical to one decided in the first action; (2) the issue was actually litigated in the first action; (3) resolution of the issue was essential to a final judgment in the first action; and (4) plaintiff had a full and fair opportunity to litigate the issue in the first action.” In re Freeman, 30 F.3d 1459, 1465 (Fed. Cir. 1994); see also MaxLinear, Inc., 880 F.3d at 1377 (citing Blonder-Tongue Labs., Inc. v. Univ. of Illinois Found., 402 U.S. 313, 91 S. Ct. 1501, 28 L.Ed. 2d 788 (1971) (finding collateral estoppel applies to a patentee who had a full and fair opportunity to litigate the validity of a patent in a prior federal case.)). With respect to the language of the instant challenged claims, we agree with Patent Owner on the issues of collateral estoppel. As Patent Owner points out, the prior determinations were made with respect to a different claim construction standard. Additionally, although the claims of the ’148 Patent and ’009 Patent are similar in scope, the recitations are not identical. Therefore, we evaluate the arguments and evidence presented in the Petition to determine whether Petitioner has demonstrated a reasonable likelihood that at least one of the challenged claims is unpatentable, rather than assuming that Patent Owner is generally estopped from asserting patentability of the challenged claims over previously presented art. Nonetheless, where appropriate, we consider the Petition’s citations to the ’148 FWD, which is part of the evidence of record in this proceeding. More particularly, we agree with Petitioner that certain issues were decided by the ’148 FWD, having been resolved against Patent Owner and affirmed by the Federal Circuit, and are binding in this proceeding. Pet. 11. Given that the ’009 Patent is a continuation of the ’148 Patent, sharing an identical Specification, we agree that Roese, Golnabi, Huima, Hayter, and Esbensen are acknowledged as prior art, that there would have been motivation to combine the references, and that combinations of those references demonstrate the obviousness of all claims of the ’148 Patent. See Id. at 11–12. slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,681,009 - Netflix, Inc. v. VL Collective IP LLCInstitutedPTAB · Oct 3, 2023 · IPR2023-00630 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–24 on all asserted grounds after finding a reasonable likelihood that Netflix would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a bachelor’s degree in electrical or computer engineering, or a closely related scientific field such as computer science, and two years of work experience with multimedia content transmission and management.” Pet. 10. “Alternatively, any lack of experience could be remedied with additional education (e.g., a master’s degree), and likewise, a lack of education can be remedied with additional work experience (e.g., 4–5 years).” Id. Patent Owner does not address the level of ordinary skill. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner contends that “no claim terms require specific construction to resolve the unpatentability issues presented” in the Petition. Pet. 15–16. For purposes of this decision, we do not construe any claim terms.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“to combine the teachings of Cassin and Huston because both references concern controlling delivery of content to a remote device over a network, and the combination provides the benefit of Cassin’s media content delivery system with a differencing engine to determine whether this is content to delete from the remote client and sending a command to delete such content as taught by Huston. Pet. 32–35 (citing Ex. 1003, Wechselberger Decl. ¶¶ 202–204). Petitioner also contends that a person of ordinary skill would have had a reasonable expectation of success in combining the teachings of Cassin and Huston because adding a delete command to a server was a known technique and would have been straightforward to a person of ordinary skill in the art. Pet. 35–36 (citing Ex. 1003 ¶ 205). Huston discloses a differencing engine to detect whether a more recent version of a data item stored in cache is available, and if so, to delete the current version and store the more recent version in order to increase the accuracy and coherence of the cache. Ex. 1005, Abstract, 3:37–44. On this record, we are persuaded by Petitioner, that a person of ordinary skill would have updated data items stored by the remote client of Cassin by deleting old versions in order to yield the benefits of increasing accuracy and coherency as taught by Huston. For purposes of this Decision, we are sufficiently persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Cassin and Huston.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,440,559 - Netflix, Inc. v. Videolabs, Inc.InstitutedPTAB · Oct 3, 2023 · IPR2023-00628 · APJ Jeffrey S Smith · IPR · Institution
Instituted IPR of claims 1–14 on all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary 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.” For the reasons that follow, we institute an inter partes review as to claims 1–14 of the ’790 patent on the grounds of unpatentability asserted in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, each and every element in a claim, arranged as recited in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Although the elements must be arranged or combined in the same way as in the claim, “the reference need not satisfy an ipsissimis verbis test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine the Teachings of Mehta and Schläpfer Petitioner contends a person of ordinary skill would have had reason to combine the teachings of Mehta and Schläpfer because both references concern distributing digital contents to mobile devices over a wireless network. Pet. 66. Petitioner also contends Mehta provides a motivation to look to Schläpfer because Mehta “recognizes the issue of resource constraints on mobile devices and contemplates taking steps to address those constraints.” Pet. 67 (citing Ex. 1003 ¶¶ 10, 12). Petitioner contends that a person of ordinary skill would have combined Mehta’s MAS with Schläpfer’s teachings of limited screen space of mobile devices and limited bandwidth of the mobile network, and an application descriptor and associated attributes. Id. at 66 (citing Ex. 1009, 11). Mr. Wechselberger testifies that a person of ordinary skill in the art would have provided a single description of each supported application of Mehta in order to accommodate the viewing capabilities of the requesting device as taught by Mehta, such as limited screen space and signal processing capabilities of the mobile device as taught by Schläpfer. Ex. 1002 ¶¶ 106–108. Petitioner argues that a person of ordinary skill would have had a reasonable expectation of success in combining the teachings of Mehta and Schläpfer because the two references rely on Java for distributing digital content to mobile devices and refer to the specific J2ME edition of Java. Pet. 68. Petitioner also contends that a person of ordinary skill would have known that a provisioning model includes a corresponding set of provisioning attributes and descriptors. Pet. 68–70. For purposes of this Decision, we are persuaded that Petitioner cites sufficient evidence to support its contention that a person of ordinary skill would have had reason to combine the teachings of Mehta and Schläpfer.” slip op. at 26
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,233,790 - Cisco Systems, Inc. v. Netsocket, Inc.InstitutedPTAB · Sep 26, 2023 · IPR2023-00606 · APJ Stacey G White · IPR · Institution
Instituted inter partes review on claims 1–9 over all six asserted § 103 grounds; the Board found a reasonable likelihood of prevailing and compelling merits for claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown at least a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, factors 1 and 3 are neutral. However, factors 2 and 4 weigh in favor of not denying institution, while factor 5 favors denying institution. Thus, we conclude this factor weighs in favor of discretionary denial. In this case, we find the merits compelling for the reasons stated below, and as such we need not determine the extent to which other relevant circumstances not discussed in the other factors could have impacted this analysis. Below, we address the merits of the patentability challenges set forth in the Petition. We then address whether the Petition presents compelling merits.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In determining whether to deny institution under § 325(d), we use the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Under the first part of the Advanced Bionics framework, we consider “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. It is undisputed that the same art was not presented to the Office. The question before us is whether substantially the same art or arguments were previously presented. The Schelén Thesis is cited on the face of the ’601 patent. See Ex. 1001, code (56). The Schelén Thesis has a common author with Schelén-1997, Schelén-1999, and Degermark. See Prelim. Resp. 21. Patent Owner states that there are “similarities in subject,” but does not direct us to specific overlap in the content of the Schelén Thesis and the art cited in the Petition. Id. In addition, Patent Owner does not indicate that any arguments made during prosecution are “substantially similar” to those before us in this proceeding. Overlap in authorship on its own is not sufficient to persuade us that the same or substantially the same art or arguments previously were presented to the Office. As a result, Patent Owner has not satisfied the first part of the Advanced Bionics framework. Accordingly, for the reasons discussed above, we decline to deny institution under § 325(d).” slip op. at 14
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art: would have had a working knowledge of the mobile telecommunication network art that is pertinent to the ’601 patent. A POSITA would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with wireless communication systems, including cellular networks that utilize IP-based core networks. Lack of work experience can be remedied by additional education, and vice versa. Pet. 11 (citing Ex. 1003 ¶¶ 19–21). Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. Prelim. Resp. 6. We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s description.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,616,601 - Cisco Systems, Inc. v. Netsocket, Inc.InstitutedPTAB · Sep 26, 2023 · IPR2023-00607 · APJ Richard M Lebovitz · IPR · Institution
The Board instituted IPR on claims 1–9, finding a reasonable likelihood that claims 1–5, 7, and 8 are obvious over Xiao, Schelen-1, and Gibson, and claims 4–8 over those references and Schelen-2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“about one or two months after the projected final written decision deadline. Thus, in view of the likelihood that a final written decision will precede the trial date, Fintiv factor 2 weighs in favor of not denying institution, particularly because if the final written decision precedes the district court date, Petitioner would be estopped under 35 U.S.C. § 315(e)(2) from raising at trial any grounds that were raised or reasonably could have been raised in this proceeding.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In determining whether to deny institution under § 325(d), we use the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). Under the first part of the Advanced Bionics framework, we consider “whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office.” Id. It is undisputed that the same art was not presented to the Office. The question before us is whether substantially the same art or arguments were previously presented.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We find Petitioner has sufficiently shown, on the present record and for the purposes of institution, that a person of ordinary skill in the art would have had a reason to combine the teachings of Xiao, Schelen-1, and Gibson, and that the combined teachings of these references disclose every limitation of claim 1. Therefore, Petitioner has demonstrated at least a reasonable likelihood of showing that claim 1 is unpatentable over Xiao, Schelen-1, and Gibson. 4. Dependent claims 2–5, 7, and 8 Petitioner asserts that dependent claims 2–5, 7, and 8 are unpatentable under 35 U.S.C. § 103 as obvious over Xiao, Schelen-1, and Gibson. Pet. 71–76. We have reviewed Petitioner’s arguments and evidence and we find them to be persuasive. Patent Owner’s Preliminary Response does not separately address these dependent claims. See Prelim. Resp. 8–11. Petitioner has shown sufficiently for purposes of this Decision that the combination of Xiao, Schelen-1, and Gibson teaches or suggests all of the limitations recited in claims 2–5, 7 and 8, and has articulated sufficient reasoning to combine these references. Therefore, Petitioner has demonstrated a reasonable likelihood of showing that these claims are unpatentable over Xiao, Schelen-1, and Gibson.” slip op. at 53
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,190,698
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.