- Sony Interactive Entertainment LLC v. Quantum Imaging LLCNo claims unpatentablePTAB · Dec 9, 2024 · IPR2023-00995 · APJ Kevin W Cherry · IPR · Final written decision
Claims 1, 3, 5, 7–12, and 23–26 were not shown unpatentable over Pisanich or the PSO Manual because neither was shown to teach or suggest the claimed QIE module.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not agree with Patent Owner that “Petitioner’s definition of a POSITA includes a general knowledge of advertising and virtual reality, but these backgrounds do not specifically apply to the ‘941 Patent at issue, and Patent Owner is unaware why Petitioner would include them in their definition.” Id. at 5. The ’941 patent claims and describes a “virtual thematic environment” in detail. Indeed, the ’941 patent describes an embodiment “having a program for integrating holographic images into a virtual thematic environment using a computerized system, includes means for displaying images from a virtual thematic environment; and means for projecting the images as holographic projections using a holographic projection system.” Ex. 1001, 3:61–67. As for advertising, the ’941 patent discusses that advertising can be included in the virtual thematic environment, id. at 7:42–57, and explains that “digital content library 209 4 “POSITA” is “person of ordinary skill in the art.” may also include scheduling directions for when the web site access and identification of where to place the web content or advertising, e-commerce, video, etc. are to be placed,” id. at 17:35–39. We adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’941 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art). We note that we would reach the same conclusions applying either Petitioner’s or Patent Owner’s definition of the level of skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Additionally, only terms that are in controversy need to be construed, and these terms need be construed only to the extent necessary to resolve the controversy. 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 12
- Expert testimonyPetitioner expert discountedPatent owner expert creditedMixed
“technology to display objects internal to the cockpit, and to display objects external to the aircraft in the virtual thematic environment” and “[s]aid ‘conventional technology’ included rendering technology configured to account for differences between multiple gaming devices as needed” to be without sufficient factual support. See Ex. 1004 ¶¶ 147–148 (citing Ex. 1007, 16:10–11; Ex. 1004 ¶ 83).. Although it may have been known in the art to create different versions or programs of a game for different devices, Mr. Crane points to no disclosure in Pisanich that explains or discloses a QIE consistent with the plain language of the claim. He points to no textbook, technical disclosure, or other independent evidence that would have led a person of ordinary skill considering Pisanich to implement a “software layer” that receives real time data and manipulates this data “so as to be accessible on different types of devices for use within the virtual thematic environment.” See, e.g., Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9, at 15–17 (PTAB Aug. 24, 2022) (precedential) (holding an expert’s declaration testimony is entitled to little weight when it “is conclusory and unsupported, [and] adds little to the conclusory assertion for which it is offered to support”). Our Trial Practice Guide cautions against crediting unsupported testimony: The Board has broad discretion to assign weight to be accorded expert testimony. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010). However, the testimony must be based on sufficient facts and data. Fed. R. Evid. 702(b). “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a).” slip op. at 27
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Pisanich meet the elements of claims 1, 3, 5, 7–12, and 23–26. Pet. 12–36. Patent Owner opposes. PO Resp. 14–43. Because we conclude that Petitioner has failed to show by a preponderance of the evidence that Pisanich accounts for the claimed QIE module, we focus our analysis on that limitation. a. “a quantum imaging environment (QIE) module, the QIE module being a software layer that receives, interprets, and manipulates the second content so as to be accessible on different types of devices for use within the virtual thematic environment…” The parties’ arguments and evidence here focus on the “quantum” slip op. at 19
Patent outcomesUS 10,846,941 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,846,941 - Sony Interactive Entertainment LLC v. Quantum Imaging LLCSome claims unpatentablePTAB · Dec 6, 2024 · IPR2023-00954 · APJ James J Mayberry · IPR · Final written decision
Claims 1, 3, 4, and 7–9 are unpatentable over Angles under §103; claims 5 and 6 were not shown unpatentable over Angles.
RulingsFinal written decision- Expert testimonyOther
“prosecution history and the amendment changing “held at” to “accessible at,” testimony upon which Patent Owner relies to support its position. Specifically, Dr. Medvidović testifies that a person having ordinary skill in the art would have understood the two phrases to be synonymous because, 1) the amendment was not made to overcome a prior art reference, 2) the applicant did not make a statement disclaiming that “being accessible at” does not encompass “being held at,” and 3) the examiner did not object to the amendment as exceeding the scope of the Specification. See Ex. 2005 ¶ 34. We find that Dr. Medvidović’s conclusion is not supported by his reasoning. First, an amendment made not to overcome a prior art reference does not mean an amendment that does not change the scope of a claim. An applicant is free to amend a claim at any time during prosecution, even an amendment that may expand the scope of a claim (one made not to overcome a prior art rejection). Second, whether “being accessible at” encompasses “being held at” is not the issue—because the scope of one term encompasses the scope of another term does not make the two terms” slip op. at 26
- ExcludeDenied
“III. MOTION TO EXCLUDE EVIDENCE Patent Owner moves to exclude Exhibits 1017–1020, 1026, and 1027,” slip op. at 83
- Skill levelOther
“B. Level of Ordinary Skill in the Art The level of skill in the art is “a prism or lens” through which we view” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“Accordingly, we conclude that the plain and ordinary meaning of the” slip op. at 27
Patent outcomesUS 8,458,028 mixedClaim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,458,028 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - PTAB · Nov 15, 2024 · IPR2024-00851 · APJ Eric C Jeschke · IPR · Institution
The Board denied institution on all claims 1–7 because the Petition did not show a reasonable likelihood of prevailing on any challenged ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of challenged claims 1–7. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant prior art. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“claim element creates a rebuttable presumption that § 112[(f)] applies” and that “the failure to use the word ‘means’ also creates a rebuttable presumption—this time that § 112[(f)] does not apply.”12 Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part) (internal citations omitted). Because the “sealing means” limitation includes the word “means,” we start from the rebuttable presumption that § 112(f) applies. Petitioner does not address the applicability of § 112(f) and does not rebut the presumption. We continue the analysis, however, and, for the reasons below, we agree with Patent Owner that § 112(f) applies to the “sealing means” limitation.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“3. “fits behind” In wherein clause (vi), claim 1 recites: “the outwardly pointing outer flange of the first connecting device fits behind the inner flange of the nut unit.” Ex. 1001, 9:4–5 (emphasis added). In the Preliminary Response, Patent Owner discusses the term “fits behind” in this claim language. See Prelim. Resp. 41–45. We need not construe explicitly this language or any other claim terms because doing so would not change the outcome of the analysis. 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 14
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 9,851,030 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, 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 factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,535,318 - Cub Elecparts Inc. v. Orange Electronic Co., Ltd.Institution deniedPTAB · Nov 12, 2024 · IPR2024-00744 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art (“POSA”) “would have a bachelor’s degree in electrical engineering and at least one year of experience in sensor/detector design or RF communications (RFIDs)” and “would have a working knowledge of tire pressure management systems and, as most POSA would also be automobile owners, would have had personal experience with tire pressure management systems which have been required in all new cars, trucks, and SUVs in the United States since 2007.” Pet. 17. Petitioner adds that “[e]ducation may substitute for experience and vice versa.” Id.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their ordinary and customary meaning. Pet. 17. Petitioner notes that, in the tire pressure detecting field, terms such as “detector,” “sensor,” and “monitor” relate to the same device and can be used interchangeably. Id. at 17–18. Patent Owner contends that no claim term needs construction to resolve the grounds asserted in the Petition. Prelim. Resp. 16. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“We agree with Patent Owner that Petitioner’s unsupported assertion that tire pressure sensors typically are programmed with only the ID as part of the factory installation is insufficient to establish obviousness in this instance. Petitioner does not provide adequate reasoning or evidence to 11 Petitioner relies on the same analysis of this claim 26 limitation for the substantially similar limitation of claim 27. Pet. 66. Accordingly, our analysis of the claim 26 limitation applies equally to the corresponding limitation of claim 27. art would have known that tire pressure sensors typically are programmed at the factory with a single ID. Furthermore, even if assuming for the sake of argument that Petitioner’s assertion is correct, the Petition fails to explain adequately how or why one of ordinary skill in the art would have modified the combination of Tang and Lemense to store only the old identification in the old tire pressure detector.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,031,064 - PTAB · Nov 1, 2024 · IPR2024-00850 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1, 3–12, 14, and 23–27 because Petitioner showed a reasonable likelihood of proving them obvious over Raizer and Hangzhou.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’632 Patent would have been a person with a working knowledge of mechanical design and automation. That person would have had a Bachelor of Science degree in an academic discipline emphasizing the design of mechanical, automation, and robotics technologies, in combination with training or at least one to two years of related work experience. Alternatively, that person could have also had a Master of Science degree in a relevant academic discipline with less than a year of related work experience in the same discipline. (Ex. 1003, ¶¶42-43). More education can supplement practical experience and vice versa (Ex. 1003, ¶¶42-43).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Neither Petitioner nor Patent Owner contends that any claim term has a meaning other than its ordinary and customary meaning. See, e.g., Pet. 4; Prelim. Resp. 8. Having considered the record, we determine that no express claim construction is necessary for any claim term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to 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 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“reasons why a skilled artisan would have sought to combine the teachings of Raizer and Hangzhou. See supra § IID.3. On this record, and for purposes of institution, we find those contentions persuasive. For example, as Petitioner observes (see, e.g., Pet. 7), and which is not disputed by Patent Owner, Hangzhou sets forth that, in the area of automating warehouses, it is a known and recognized practice to provide pathways (e.g., auto-guided trolley passage spaces 112) underneath shelving units for movement of automated trolleys or robots. See, e.g., Ex. 1006 ¶ 48 (“an auto-guided trolley 200 preferentially travels in column laneways 32 and in auto-guided trolley passage spaces 112”); Fig. 2. Patent Owner also does not meaningfully dispute Dr. Derby’s testimony that “[i]t was well known to elevate the shelving units above the floor so that robots loaded with containers can travel underneath thereby allowing for more flexible route planning and the elimination of bottlenecks.” See Ex. 1003 ¶ 107; see also id at Section VI., ¶¶ 45–53 (describing in detail, with citation to record evidence, that one of ordinary skill in the art understood that shelving units could be elevated above warehouse floors).” slip op. at 27
- Other 314aInstitution denied discretionary otherDenied
“PETITION UNDER 35 U.S.C. § 314 IS WARRANTED Patent Owner requests that we exercise our discretion to deny institution under 35 U.S.C. § 314. See Prelim. Resp. 34–36. The principle basis for that request is that the panel should accept Patent Owner’s arguments as to insufficient reason or motivation to combine the teachings of Raizer and Hangzhou, and exercise discretion to deny on that basis. See id. at 34. As set forth above, however, on this record we conclude that Petitioner has shown a reasonable likelihood in its challenge to all the challenged claims.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,472,632 - Dental Imaging Technologies Corporation v. 3shape A/SInstitution deniedPTAB · Oct 29, 2024 · IPR2024-00849 · APJ James J Mayberry · IPR · Institution
The Board denied institution of review for claims 1, 2, 4, 5, 9, 10, and 12–17 under General Plastic discretion and denied joinder; it did not reach the merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied
“g. Summary and Conclusion In summary, we determine that factors 1, 3, and 6 weigh in favor of discretionary denial, factors 2, and 4 weigh against discretionary denial, and factors 5 and 7 are neutral. Considering these factors as a whole, and on this record, we determine that the facts here weigh in favor of exercising discretion under 35 U.S.C. § 314(a) to deny institution. Significant to our analysis is that the similarities in the facts in the instant proceeding and Uniloc outweigh the differences. Specifically, the primary difference between the facts here and the facts in Uniloc is that Petitioner explained its knowledge of the prior art and, as to Lehmann II, Petitioner demonstrated that it was not aware of Lehmann II prior to filing the first petition. In Uniloc, Apple made no such showing. As we discuss above, however, the significance of Lehmann II in this proceeding may be limited, given our initial determination of the merits of Patent Owner’s arguments against Lehmann II in the Medit IPR. As such, the lack of knowledge of Lehmann II is insufficient to counter the similarities between this proceeding and Uniloc.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“2. Merits Analysis Having decided to exercise discretion to deny institution, we need not turn to the merits of the Petition and Motion. III. CONCLUSION We determine that exercising our discretion to not institute this proceeding is warranted based on our precedential decisions in General Plastic and Uniloc. Accordingly, the Petition and Motion are denied.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“(c) JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. “To join a party to an instituted [inter partes review (IPR)], the plain language of § 315(c) requires two different decisions.” Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020). “First, the statute requires that the Director (or the Board acting through a delegation of authority) . . . determine whether the joinder applicant’s petition for IPR ‘warrants’ institution under § 314.” Id. “Second, to effect joinder, § 315(c) requires the Director to exercise h[er] discretion to decide whether to ‘join as a party’ the joinder applicant.” Id. As the moving party, Petitioner bears the burden of proving that it is entitled to joinder. 37 C.F.R. § 42.20(c). A motion for joinder should: (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 14
Discretionary denialPatents in suitUS 10,695,151 - Profrac Holding Corporation / U.S. Well Services, LLC v. Halliburton Energy Services, Inc.All claims unpatentablePTAB · Oct 29, 2024 · PGR2023-00023 · APJ Brent M Dougal · PGR · Final written decision
Claims 1–20 are unpatentable under §101 as directed to an abstract idea without significantly more; the Board did not reach the asserted §103 grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a B.S. in Chemical Engineering, Mechanical Engineering, Materials Science, or Metallurgical Engineering or an equivalent field and at least two years of academic or industry experience in the oil and gas industry, including experience with process control systems. Further, a person with additional education but less professional experience, and vice-versa, may qualify. Pet. 23–24 (citing Ex. 1003 ¶ 4). Patent Owner adopts Petitioner’s definition. PO Resp. 6. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’058 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In post-grant review, we construe claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.200(b) (2022). Neither Petitioner, nor Patent Owner, provides constructions of any claim terms. Pet. 25; PO Resp 6–7. We determine that no terms need to be construed. 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 5
- Patent Eligibility (§101) › Alice/Mayo step one — 'directed to'Step1 directed to exceptionUnpatentable
“formation response data comprising data from one or more downhole sensors or surface sensors” and “selecting a representative system model based on the received formation response data and sequence of stimuli” are mental processes. We determine that the record supports that they are. The Background of the ’058 patent supports our finding that these steps are mental processes. In particular, the ’058 patent teaches that it was known that “a technician may review sensor data” and that “a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data.” Id. at 22 (quoting Ex. 1001, 1:9–26); see also Dec. 23–24 (preliminarily finding these claimed patent). Regarding the claimed step of “controlling an electrical fracturing pump based on the representative system model,” Patent Owner does argue, and we agree, that it is not a mental process in that one of ordinary skill in the art would not have performed it in the human mind. PO Resp. 27. We also agree that the Petition does not expressly argue that the step of “generating a sequence of stimuli for application to a well environment” is a mental process. However, the ’058 patent explains that these two steps may be performed via a generic computer. Ex. 1001, 6:6–36, 6:65–7:33, 8:56–9:28. Requiring the use of a computer does not change the focus of the claim away from being directed towards an abstract idea. “[T]he inability for the human mind to perform each claim step does not alone confer patentability.” FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“As we have explained, ‘the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.’” (quoting Bancorp Servs. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)). See also Miller Mendel, Inc. v. City of Anna, Texas, 107 F.4th 1345, 1353 (Fed. Cir. 2024). (“We are not persuaded that claim 1 cannot be directed to an abstract idea even if certain steps cannot be completed in the mind or by pen and paper. . . . [R]equiring the use of a computer alone does not change the focus of a claim directed towards an abstract idea into one directed towards ‘a specific improvement to computer functionality.’ In re TLI Commc'ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016).”” slip op. at 10
- Patent Eligibility (§101) › Alice/Mayo step two — inventive conceptStep2 no inventive conceptUnpatentable
“4. Step 2B Under Step 2B, only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field; or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. applying the … abstract idea using techniques that are, whether considered individually or as an ordered combination, well-understood, routine, and conventional.’ cxLoyalty Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021).” Pet. 97. The Petition cites the Background of the ’058 patent to support its argument that the specification admits that many of the claimed steps were known. Id. at 91. In the oil and gas industry, electric frac pumps are often controlled in order to achieve certain downhole environment responses. However, typically settings are performed manually based on manually appraised information retrieved from the downhole environment. For example, a technician may review sensor data and, based on experience, adjust various settings such as flow rate, pressure values, chemical compositions, etc., on an electric frac pump. In some cases, a representative system model may be used for determining pump settings based on sensor information; however, the representative system model is typically manually selected by a technician based on observed sensor data. Additionally, the representative system model may be a static construct and may not accurately reflect the well to which it has been deployed. Ex. 1001, 1:9–26 (emphasis added). From the above, it will be understood that much of claim 1 was well-understood, routine, and conventional, whether considered individually or as an ordered combination. The above paragraph makes clear that “controlling an electrical fracturing pump based on the representative system model” was known and conventional. In addition, adjusting settings on an electrical fracturing pump is also how the ’058 patent teaches to generate a sequence of stimuli. Ex. 1001, 2:25–33 (“A given stimulus of the sequence of stimuli can be achieved by adjusting . . . flow rates . . . . In some examples, a sequence can include a various amplitudes (e.g., high, medium, low, etc.).”). Thus, generating a sequence of stimuli is also acknowledged as being known in the Background. See also Dec. 22–23 (preliminarily finding that these limitations were known). Petitioner provides additional argument that other references also show that these limitations were known. See e.g., Pet. 94. However, it is not necessary for us to review these in view of the express acknowledgement of the state of the art in ’058 patent. Based on the record, we determine that claim 1 does not include any specific limitation beyond the judicial exception that is not “well-understood, routine, [and] conventional” in the field.” slip op. at 15
Patent outcomesUS 11,373,058 unpatentableClaim construction§ 101 eligibility§ 103 obviousnesscites Alice · Enfish · GrahamPatents in suitUS 11,373,058
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.