- Aylo Freesites Ltd v. Wellcomemat, LLCInstitutedPTAB · Dec 6, 2024 · IPR2024-01101 · APJ Brian P Murphy · IPR · Institution
The Board instituted IPR of claim 17 on all five grounds, finding a reasonable likelihood of prevailing based on Gupta and Vasilevsky with Logan.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to challenged claim 17 in the ’286 patent. Accordingly, we institute an inter partes review of claim 17 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“The USPTO Director has issued “binding agency guidance” for application of the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”), 3.12 Pursuant to the Guidance Memo, “the PTAB will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Id. (citing Sotera). Petitioner has filed a Sotera stipulation providing that: Petitioner and its real parties-in-interest will not pursue in the related district court proceeding where Petitioner is a defendant (WellcomeMat, LLC v. Aylo Holdings Sarl et al., No. 2:23-cv-00483-JRG (E.D. Tex.)) an invalidity challenge of claim 17 based on “any ground that [Petitioner] raised or” slip op. at 12
- Skill levelSkill level board ownOther
“considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSITA. We determine that no express finding is necessary, on the present record, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). The difference in how each party characterizes a POSITA’s work experience does not change our analysis or conclusions based on the present record.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction For purposes of this proceeding, Petitioner and Patent Owner both advocate for the “plain and ordinary meaning” of the claim terms without further analysis. Pet. 15 (citing Ex. 1002 ¶¶ 72–73); Prelim. Resp. 14–15. On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are invited to address claim construction in their briefs. III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) - FINTIV Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a)” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,307,286 - PTAB · Nov 26, 2024 · IPR2024-00936 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1, 5, 8, 9, 11–19, 23, 26, 27, and 29–36 are obvious over Tayloe, TI Datasheet, and Macnally.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1041) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Accordingly, on the present record at this stage of the proceeding and for the reasons discussed above, we find that Petitioner has shown a reasonable likelihood of establishing that one of ordinary skill in the art would have been motivated to combine the teachings of Tayloe, TI Datasheet, and Macnally with a reasonable expectation of success. Patent Owner is invited to elaborate further on its positions in future briefing with potential expert support.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of EM circuit design.” Pet. 6 (citing Ex. 1003 ¶¶ 68–71). Petitioner further proposes that “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Id. Patent Owner does not take a position, in the Preliminary Response, on the level of ordinary skill in the art. See generally Prelim. Resp. On the present record at this stage of the proceeding, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’528 patent and 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).” slip op. at 12
- Prior constructionPrior construction adoptedTerm construed petitioner constructionDecided for petitioner
“their plain and ordinary meaning, with one exception. Pet. 3. Specifically, Petitioner asserts “storage element” or “energy storage element” are recited “interchangeably” in the claims and should each be construed to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal,” which Petitioner notes was “determined by the Board and affirmed by the [U.S. Court of Appeals for the] Federal Circuit.” Id. (citing ParkerVision, Inc. v. Vidal, 88 F.4th 969, 976 (Fed. Cir. 2023) (holding “ParkerVision acted as its own lexicographer to define the term ‘storage element’” and “the Board’s construction of ‘storage element’ [(quoted above)] correctly tracks the lexicography provided by [ParkerVision]”) (citing U.S. Patent No. 6,061,551 (“the ’551 patent”), 66:55–67)). Petitioner contends that, like U.S. Patent No. 7,110,444 that was at issue in ParkerVision v. Vidal, the ’528 patent also incorporates the ’551 patent by reference. Pet. 4 (citing Ex. 1001, 1:30–34). And Petitioner notes that the ’528 patent “includes an identical disclosure to that deemed dispositive from the incorporated by reference ’551 patent.” Id. (citing Ex. 1001, 73:9–22 (which Petitioner contends defines “storage module”)). Further, Petitioner asserts “[n]o intrinsic evidence demands a different construction” because, even though claim 1 recites “system,” “energy,” and “transfer,” it does so “in isolation” and “does not recite ‘energy transfer system,’ let alone restrict the claimed ‘storage element’ to any energy transfer system.” Id. at 5 (also contending the file history of the ’528 patent does not support a different construction). Petitioner also contends “the proposed combinations teach the claimed ‘storage element’ or ‘energy storage element,’ even including the alleged condition of ‘low impedance load’ that purportedly ‘goes to the heart of what makes an element, a “storage” element.’” Id. Patent Owner does not take a position on claim construction in the Preliminary Response. See generally Prelim. Resp. On the present record at this stage of the proceeding, we agree with Petitioner, for the reasons discussed above, that “storage element” and “energy storage element” are used interchangeably in the claims and should be construed consistently with our prior construction of “storage element,” which, as noted above, was affirmed by the Federal Circuit, to mean “an element of a system that stores non-negligible amounts of energy from an input EM signal.” We need not construe any other claim terms expressly because there is no present controversy as to the meaning of any other claim terms in this proceeding. Realtime Data, 912 F.3d at 1375.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,118,528 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · Nov 26, 2024 · IPR2024-00796 · APJ Iftikhar Ahmed · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that claims 1 and 11 would be obvious over Nevo and Avitabile.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on the information presented in the Petition and the supporting evidence, we are persuaded that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Stipulate[s] and agree[s] that, if the PTAB institutes an inter partes review proceeding (“IPR”) for U.S. Patent No. 7,483,686 on the grounds presented in [the Petition], [Petitioner] will not pursue an invalidity defense in [the Western District of Texas Litigation] that the patent claims subject to the instituted IPR are invalid based on the same grounds as in the [P]etition or any grounds that could have reasonably been raised in the [P]etition. Ex. 1015 (letter from M. Bernstein to J. Charkow, dated May 21, 2024); see also Prelim. Reply 1 (“Patent Owner’s Preliminary Response (Paper 6) fails to acknowledge, much less address, Petitioner’s Sotera stipulation not to pursue in the related litigation the same grounds or any grounds of invalidity that could reasonably have been raised in this IPR.”); Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020) (Decision Granting Institution) (precedential as to § II.A).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering or a related subject and two or more years of experience in the field of [radio frequency (‘RF’)] circuit design, or at least five years of work experience and training in the design and development of RF circuits and/or systems,” and “[l]ess work experience may be compensated by a higher level of education, such as a master’s degree.” Pet. 14–15 (citing Ex. 1002 ¶ 38). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. See generally Prelim. Resp. We determine, on the current record, that Petitioner’s proposed level of ordinary skill is consistent with the ’686 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d at 1579. We adopt that level of ordinary skill in the level of ordinary skill in the art based on the full trial record. slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that all claim terms should be given their plain and ordinary meaning. Pet. 15 (citing Ex. 1002 ¶ 74). Petitioner, however, notes that several claim terms in the ’686 patent, or closely related claim terms for patents related to the ’686 patent, have been construed during prior litigation involving Patent Owner. Id. Petitioner discusses five claim terms and various constructions proposed or adopted in prior litigation. Id. at 15–20.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,483,686 - Aylo Freesites Ltd v. Wellcomemat, LLCInstitutedPTAB · Sep 5, 2024 · IPR2024-00710 · APJ Brian P Murphy · IPR · Institution
The Board instituted review of claims 13–15 and 18–20 on all five asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’286 patent. Accordingly, we institute an inter partes review of claims 13–15 and 18–20 of the ’286 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“demonstrated so-called “compelling merits” in its Grounds of challenge. Pet. 5; Prelim. Resp. 47; Reply 5; Sur-Reply 4–5. The Director has clarified her Guidance Memo, such that “in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techns. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23, 4–5 (PTAB Feb. 27, 2023) (precedential) (“CommScope”). Because we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution, we do not reach the question of whether Petitioner has demonstrated “compelling merits” in support of its unpatentability challenges. Conclusion Regarding Discretionary Denial On balance, we determine that Fintiv factors 1–5 collectively weigh against exercising our discretion to deny institution. Therefore, we decline to exercise our discretion to deny institution of inter partes review under Section 314(a).” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“On the present record, we determine Petitioner’s argument and evidence show a reasonable likelihood it would prevail in showing the unpatentability of independent claim 13 as anticipated by Gupta.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On the present record, Patent Owner’s arguments do not address Dr. Houh’s detailed testimony or Petitioner’s proposed substitution of the Internet as taught by Logan, in place of the HAN in Vasilevsky’s system. For example, the substitution of the Internet for the HAN in Vasilevsky would appear to provide the centralized media server as a server-side “video editing environment” recited in claim Limitation 13.1. See Ex. 1002 ¶¶ 318 (“processor and memory [] at the server-side such that the centralized media server executes software for serving clients”), 319 (“computer-readable media of Vasilevsky comprises a video editing environment in the form of software for both editing bookmarks and streaming video, executed by the centralized media server and storages”), 321 (“Logan . . . teaches implementing a television program bookmarking system using a public network, i.e., the Internet”), 322 (“Logan discloses the desirability of implementing its bookmarking system over a public network such as the Internet”), 323 (proposed “modification would have beneficially allowed more users access via a wider public network to participate in the system to add, modify and playback video bookmarks”). On the present record, Dr. Houh’s declaration testimony stands unrebutted and provides a motivation for a POSITA to combine references with a reasonable likelihood of success.” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 8,307,286 - PTAB · Aug 14, 2024 · IPR2024-00207 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–25, 38, and 39 on all asserted grounds, finding a reasonable likelihood that Motorola would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the 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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’249 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“The mixing operation described in Botha appears materially different than that described in Löppönen. The Office acknowledged in allowing the ’249 patent that in Löppönen’s mixed stream, “the user still hears only one group at a time.” Ex. 1003 at 32, 76–77. That does not appear to be the case in Botha. In Botha, the combination of a variety of audio streams [occurs] in such a way that each participant will hear all other participants’ voices except their own. This is known as an ‘N minus l’ mix- where ‘N’ represents the sum of all audio streams entering a[t] the core logic of the invention, and the ‘minus l’ portion refers to the subtraction of the current participant’s stream from the stream returned to them. Ex. 1004, 10:35–43. 3. Conclusion Based on the current record before us, we determine that Petitioner is not asserting the same or substantially the same art or arguments previously presented to the Office with respect to Botha (Ground 1). Accordingly, we decline to exercise our discretion to deny institution under 35 U.S.C. § 325(d).3 E. Prior Art References” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have had at least a B.S. degree in electrical engineering, computer science, or a similar field, plus approximately three years of industry in networking or communication systems, in particular address interoperability between different types of networks and satellite communications. Pet. 7–8 (citing Ex. 1002 ¶ 68). Patent Owner “does not dispute the proposal provided by Petitioner as to who would qualify as a POSITA.” Prelim. Resp. 6. pre-AIA law applies. See Prelim. Resp. Accordingly, we cite to pre-AIA § 103(a). We regard Petitioner’s definition as consistent with the ’249 patent and the asserted prior art, and the definition is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with Petitioner that we can determine whether to institute trial without having to resolve Petitioner’s assertion of indefiniteness. See Samsung, 948 F.3d 1355 (question of indefiniteness “is simply another ground on which the claims might be challenged in an appropriate forum,” and “does not necessarily preclude the Board from addressing the patentability of the claims on section 102 and 103 grounds”). Independent claim 25 is directed to a system for providing a push-to- talk proxy media service, reciting a “means for receiving,” a “means for mixing,” and a “means for transmitting,” among other things. Ex. 1001, 25:51–64. Petitioner identifies the recited functions and provides corresponding structures for these “means for” limitations recited by claim 25 pursuant to 35 U.S.C. § 112 ¶ 6. Pet. 10–11. Patent Owner “maintains that the proposed constructions for these three claim terms are overly limiting since the specification provides support for a broader range of structures, at the least, and does not concede to the constructions provided by Petitioner.” Prelim. Resp. 6. It is not necessary for us to resolve the claim construction issues identified by the parties in order for us to determine whether to institute inter partes review of the ’249 patent. Accordingly, for purposes of this Decision and based upon the preliminary record, we decline to expressly construe any of the claim terms at this point in the proceeding. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). This preliminary Decision, however, does not prevent the parties from proposing, presenting evidence, or arguing a same or different construction of the claims during trial. The parties are encouraged to present their claim construction arguments and evidence as permitted by our rules.2 A final claim construction will be determined after the close of all the evidence and after any oral hearing in this matter. D. Discretionary Denial – 325(d)” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,145,249 - PTAB · Aug 5, 2024 · IPR2024-00595 · APJ Brian P Murphy · IPR · Institution
Instituted IPR of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including obviousness over Pierre and Gershman.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Advanced Bionics Part 2 We also consider whether Petitioner has demonstrated the Office erred “in a manner material to the patentability of challenged claims.” Advanced Bionics, Paper 6 at 8. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8 n.9; see also NPRM at 28700 (“material error may include misapprehending or overlooking clear, specific evidence in the prior record, including teachings of the relevant prior art that impact the patentability of the challenged claim”). We evaluate Becton, Dickinson factors (c), (e), and (f) to determine whether Petitioner has demonstrated material error. Id. at 10. Those factors are: (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (Director Review vacating Board decision denying institution, finding examiner misapprehended or overlooked prior Board determinations regarding same references in related IPR). In evaluating Becton, Dickinson factors (c) and (e), we determine Petitioner has shown the Examiner erred by overlooking Gershman’s teaching of a “moving plate” and digital image capture of an unrestrained chick as a disclosure of the “unrestrained chick” limitation. More particularly, the record evidence at this stage of the proceeding indicates the Examiner did not meaningfully consider Gershman’s disclosure: (i) of Figure 3, showing a chick on a “moving plate,” (ii) of Figures 5 and 6, digital images of a chick “reflexively” opening its wings without restraint for image capture, or (iii) that it would have been “obvious” to “adapt[]” and “add” the “moving plate” system to the “end” of industrial chick processing lines. Pet. 10, 22, 36–37 (compare Ex. 1002, 220–221, 226–228 with Ex. 1003, 1, 2, 5, 6, 10). Regarding Becton, Dickinson factor (f), the Petition presents additional evidence and facts, including material teachings of the new Pierre reference regarding the “unrestrained chick” limitation as detailed in Part 1 above, that warrant inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’124 patent. Accordingly, we institute an inter partes review of claims 1–18 of the ’124 patent on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“unrestrained chick” limitation in independent claims 1 and 6. Pet. 36–37, 39–40. Petitioner emphasizes Pierre’s teaching of placing a chick in a position where it is falling so that it will open its wings “naturally” for image capture by a digital camera. Id. at 36, 39 (citing Ex. 1004, 4). Petitioner argues it would have been obvious to use Gershman’s moving plate to cause a chick to fall and “reflexively” open it wings for image capture as in Pierre, “because both Pierre and Gershman are in the same field and directed to solving the same problem, namely, automating assessment of chicks by imaging their wings.” Id. at 37, 39–40. Patent Owner does not address the argument. See Prelim. Resp. 12–15. On the present record, we agree with Petitioner’s reliance on Pierre-Gershman and also refer to our analysis of Ground 1 and the teaching of Gershman’s “moving plate” as a disclosure of the “unrestrained chick” limitation. On the present record, Petitioner’s argument and evidence support the position that Pierre and Gershman are analogous art and the proposed combination of Pierre-Gershman teaches the “unrestrained chick” limitation. slip op. at 24
§ 103 obviousnessDiscretionary denialPatents in suitUS 10,806,124 - PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - PTAB · Jul 18, 2024 · IPR2024-00327 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Demircin renders claim 1 obvious.
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); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, 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 ’303 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 33– 39 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.8 Pet. 76 (citing Ex. 1029). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Preliminary Analysis Regarding Claim 1 At this stage, we are persuaded by Petitioner’s contentions that the teachings of Demircin satisfy each limitation of claim 1. On the current record, we do not agree with Patent Owner’s arguments that Demircin does not satisfy the parties’ agreed construction. As cited by Petitioner (see, e.g., Pet. 33, 43), Demircin teaches that when additional bandwidth becomes available, NAL units that were previously discarded or only partially transmitted may be transmitted in a delayed manner (Ex. 1005 ¶¶ 34, 104– 128, Fig. 13, 14). We are currently persuaded that Demircin teaches or reasonably suggests that such delayed NAL units could be received out of order and would be rearranged, as claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,986,303 - Databricks, Inc. v. R2 Solutions LLCInstitution deniedPTAB · Jun 11, 2024 · IPR2024-00659 · APJ Brian P Murphy · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that Pike, Pike with Chowdhuri, or Pike with Chowdhuri and MacLeod rendered claims 1–46 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, and the evidence of record, for the reasons set forth below, we conclude Petitioner does not demonstrate a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’610 patent. Accordingly, we do not institute an inter partes review of claims 1–46 of the ’610 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner relies on conclusory reasoning grounded in hindsight to assert a POSITA would have found it obvious to include file names to identify the data in each of Pike’s input files “because it would have allowed for locating that data group in Pike’s system and understanding the data in that file.” Id. at 18 (citing Ex. 1005 ¶ 93).13 Petitioner then makes the leap that, by understanding the data in an input file, a MapReduce programmer would have had reason “to identify input files and write ‘application-specific’ map and reduce functions on those files.” Id. at 18–19 (citing Ex. 1002, 10:1–7, 11:28–47, 14:12–27; Ex. 1005 ¶ 93). The difficulty with Petitioner’s position is that neither Pike nor other cited references disclose, teach, suggest, or otherwise provide motivation to write application-specific map and reduce functions that process each input file by identifiable schema or data type, i.e., by “data group” as recited in claim 1. Pike teaches application-specific programming “to process the input data one record at a time” or “to generate its output data in the form of key/value pairs,” nothing more. Ex. 1002, 7:31–36; see Pet. 29 (citing same); Prelim. Resp. 40–41, 50–51, 56 (citing same). Petitioner’s posited file names for Pike’s input files, moreover, could not serve as the claimed “data group” mechanism to identify the data in each input file by schema (or data type) for separate map and reduce processing. Each of Pike’s 13 Linn Declaration paragraph 93 is substantially identical to Petitioner’s argument and does not add any further insight or analysis on this point. data blocks can include data from more than one input file, a portion of one input file, or an entire input file. Ex. 1002, 6:55–7:6; see also Prelim. Resp. 47 (“Pike’s ‘data blocks’ (purported ‘partitions’) can be entire ‘input files,’ parts of ‘input files,’ or parts of multiple ‘input files’”). Therefore, a file name for one input file could not uniquely identify all of the data within a given data block, which could include data from different input files. Id. We agree with Patent Owner’s reasoning and argument on this point as well. In sum, Petitioner fails to show sufficiently that a POSITA would have had reason or motivation to use input file names in Pike as “data group” identifiers, as recited in claim 1 of the ’610 patent. See KSR, 550 U.S. at 418 (obviousness requires “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”).” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentable
“We further agree with Patent Owner that Petitioner’s asserted motivation for tracking processed data “derived from a particular [input] file” to improve efficiency “by enabling a data set to be selectively reduced after it is mapped” (Pet. 35–36 (citing Ex. 1005 ¶ 119)), is speculative hindsight-based reasoning. Petitioner’s posited motivation is grounded in benefits residing in the ’610 patent, not in the prior art or knowledge of a POSITA. Prelim. Resp. 48. Petitioner’s evidence—Dr. Linn’s naked opinion that a POSITA “could” have used the identification of processed output file data as “derived from a particular file” to selectively reduce intermediate data (Ex. 1005 ¶ 119)—is unpersuasive for the reasons given above and legally insufficient. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“reasonable likelihood of prevailing in its challenge to the patentability of any of claims 1–46 of the ’610 patent. Therefore, we deny institution of inter partes review of the challenged claims. We need not address Patent Owner’s argument for discretionary denial under 35 U.S.C. § 325(d) in view of our decision denying institution on the merits.” slip op. at 50
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,190,610 - PTAB · Jun 11, 2024 · IPR2024-00245 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, 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 ’150 Patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 35 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.7 Pet. 88 (citing Ex. 1023). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with 7 See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], 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.”).8” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner states that (i) “coded multi-view video signal,” recited in each of the challenged claims, “encompasses a coded video signal for two or more viewpoints, including at least one base viewpoint and at least one nonbase viewpoint” (Pet. 7), and (ii) “picture signal,” also recited in each of the challenged claims, “refers to a signal that represents at least one picture from a viewpoint” (Pet. 9). Petitioner also identifies four elements of claim 1 that Petitioner contends are means-plus-function claim elements under 35 U.S.C. § 112 ¶ 6 (pre-AIA). Patent Owner states that for the purposes of its Preliminary Response, Patent Owner “does not dispute Petitioner’s proposed constructions . . . , including terms that it contends are subject to 35 U.S.C. § 112(6).” Prelim. Resp. 10. At this stage, we apply the parties’ agreed-upon constructions for the purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“and DTS are provided in optional fields of packetized elementary stream packets. Ex. 1005, 7:19–25. Further, “[t]he video DTS . . . indicates the time when the picture needs to be decoded by the STD” (Ex. 1005, 7:47– 49), and on the current record, we understand Petitioner to cite the DTS parameters encoded in the transport stream for enhancement layer pictures as teaching the claimed coded information representing a desired delay time. Pet. 33. Among other examples, Petitioner (Pet. 34) and Dr. Reader (Ex. 1005 ¶ 201) cite Chen-736’s example of the formula DTSEi = DTSLi +1.5F, where F is a time interval based on the frame rate (Ex. 1005, 8:9–20), as indicating that DTSEi represents the start of decoding of the ith picture in the enhancement layer being delayed 1.5F relative to the start of decoding of the ith picture frame of the base layer. Pet. 36 (citing Ex. 1003 ¶ 201); see Pet. 35–40 (citing additional examples of serial and parallel decoding with similar DTS calculations). At this stage, we find Petitioner’s position that the claim’s recitation that the coded information must “represent” the desired delay time to be a reasonable reading of the plain language of the claim such that a DTS value can represent the desired delay time even if it requires calculation. Pet. 35 n.8. Even if Chen-736’s use of F-based offsets as time intervals “is different than the concept of a desired delay between decoding” and Chen-736 recognizes the distinction between PTS and DTS (Prelim. Resp. 14–15), on the current record, these arguments do not rebut Petitioner’s mapping of Chen-736 to the claim language. Similarly, Patent Owner’s argument that Chen-736 teaches a DTS for all picture signals, including the base viewpoints and non-base viewpoints (Prelim. Resp. 16), does not rebut Petitioner’s mapping of Chen-736’s enhancement-layer DTS to the claim language. At this stage, on the current record we determine Petitioner has sufficiently shown that Chen-736 teaches or reasonably suggests this claim element.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,139,150
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.