- PTAB · Jan 23, 2025 · IPR2024-01094 · APJ Grace Karaffa Obermann · IPR · Institution
Instituted review of claims 1–4, 6, and 8–14 on all asserted grounds; Petitioner showed a reasonable likelihood that claim 1 is obvious over Ma.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“In Sotera Wireless, Inc. v. Massimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential), the Board declined to exercise its discretion to deny review under Fintiv where the patent owner stipulated “if IPR is instituted, they will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR.” Sotera Wireless, Paper 12 at 18. Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).6 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., 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.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSA”) at the time of the alleged invention of the ’223 patent would have had a university degree in chemistry and additional expertise or a second university degree in the field of electrical engineering, particularly optoelectronics, or alternatively a university degree in electrical engineering and additional expertise or a second university degree in the field of chemistry. The person of ordinary skill in the art has spent several years studying the structure and function of organic optoelectronic components, in particular OLEDs, and has detailed knowledge of the chemical structure of light-emitting organic layers and the transport of charge carriers to these layers. In this respect, the person of ordinary skill in the art works at the interface between electrical engineering/physics (charge carrier transport and light emission processes in optoelectronic components) and chemistry, in particular organic chemistry (materials and layer stack combinations suitable). Pet. 14 (citing Ex. 1003 ¶¶ 46–47). Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1005, (code 57); Ex. 1007, 8107 (abstracts of the references asserted in the patentability challenges).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe claim terms only as relevant to the parties’ contentions and only to the extent necessary to resolve the issues in dispute. See Vivid 7 Following the parties’ convention, when citing Exhibit 1007, we refer to original page numbers, not page numbers added by Petitioner. Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party indicates that an express construction for any claim term is necessary to our decision whether to institute review. Pet. 15; see generally Prelim. Resp. On this record, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,558,223 - PTAB · Jan 23, 2025 · IPR2024-01093 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR of claims 1–16 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated by Choulis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We apply a two-part framework when assessing whether to exercise our discretion to deny a petition under Section 325(d). First, we consider whether the same or substantially the same prior art or arguments previously were presented to the Office. Second, if either condition is satisfied, we assess whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (setting forth twopart framework that guides the Board’s decision whether to exercise its discretion to deny review under Section 325(d)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Importantly, moreover, on June 21, 2022, the Director of the United States Patent and Trademark Office issued a Memorandum setting forth an “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Guidance Memo”).8 The Guidance Memo states that “[c]onsistent with Sotera Wireless, Inc., 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.” Guidance Memo 3 (footnote and emphasis omitted).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) at the time of the alleged invention of the ’164 patent would have had a Bachelor’s degree in chemistry, physics, or a comparable field of study, and at least three years of research or industrial experience with organic optoelectronic light-emitting devices. An individual with additional education could have less research or industrial experience and vice versa. Pet. 12. Patent Owner does not dispute Petitioner’s argument. See generally Prelim. Resp. Neither party indicates that the result on institution would change depending on the definition selected. Accordingly, for the sole purpose of deciding whether to institute review, we adopt Petitioner’s uncontested proposed definition, because, on this record, it is consistent with the disclosures of the asserted prior art. See Ex. 1004, (code 57); Ex. 1006, code (57); Ex. 1008, code (57); Ex. 1009, code (57) (abstracts of the references asserted in the patentability challenges).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“to the meaning of particular claim terms.”). Claim 1 recites first, second, and third matrix materials but, aside from reciting relationships between the LUMOs and HOMOs of the matrix material, does not require any particular composition or any particular amount for any of the three matrix materials. Ex. 1001, 9:4–22. Nor does claim 1 recite that any of the matrix materials must be present in a continuous phase. Id. Claim 1 does recite that the organic functional layer, which includes the three matrix materials, is doped with at least one emitter material. Id. at 9:21–22. On this record, no words in claim 1 limit a “matrix material” to the meaning advanced by Patent Owner.” slip op. at 24
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,723,164 - PTAB · Jan 22, 2025 · IPR2024-01090 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–3, 21, 29–31, 42–44, 54, and 62–65 based on the §103 combination of Blumenberg, Bhumkar, and Griffin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Patent Owner may bear a burden of production, however, to show that the Challenged Claims are entitled to the benefit of an earlier filing date. Id. at 1379–80.” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, we preliminarily agree with Petitioner that the claim limitations amount to a combination of known elements that a POSITA could have combined to achieve predictable results. See Intel, 21 F.4th at 799–800 (determining that a showing of the obviousness in predictable use of prior art elements according to their established functions requires only a showing that the combination be a suitable option). Among other reasons, the preliminary record supports Petitioner’s arguments that combining the teachings of Blumenberg, Bhumkar, and Griffin amounts to applying known solutions in the field of computer interfaces with predictable outcomes. See Pet. 12–18. As noted above, we encourage the parties to address the scope and meaning of the “when” limitations as a matter of claim interpretation, but we do not currently understand the plain language of Limitation [1.o] to require that the “portion of the second web page” or “menu” is displayed only after expiration of the “second user-configurable predefined duration,” termed by Patent Owner the “Alternative Modification.” Again, we encourage the parties to fully address this issue as a matter of claim construction. We additionally note that, even if we were to interpret the claims to require that the recited functions of Limitation [1.o] occur only the “prerequisite elements” are satisfied, we are still preliminarily persuaded by Petitioner’s arguments that combined teachings of the prior art satisfy the claim elements as a mere combination of known elements combined according to their known functions with predictable results.” slip op. at 27
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“scenarios. Pet. 1 (characterizing three claimed scenarios as (i) an “inadvertent” contact, (ii) a “tap” contact, and (iii) a “hold” contact), 4 (“Independent Claims 1 and 42 outline three scenarios regarding a user’s contact with a touch screen device”); Prelim. Resp. 3 (“With respect to claim 1, these three scenarios include: . . . .”); see Ex. 2001 ¶¶ 28 (“As recited in claim 1, the three different claimed functionalities are executed ‘when’ the prerequisite elements are met (described as three scenarios by Dr. Cockburn.”) (citing Ex. 1001, 102:50–103:55; Ex. 1003 ¶¶ 33–35), 29–32 (describing the first, second, and third scenarios). In substance, the parties’ dispute appears to concern whether the plain language of the claims requires that a recited function must be performed only after or in response to expiration of a threshold (and other prerequisites), as opposed to requiring a function that begins before and continues after expiration of a threshold. Notably, dependent claim 3 recites: “The electronic device of claim 1, wherein the electronic device is configured such that the first feedback that is perceptible by touch is output prior to the display of the menu.” Ex. 1001, 104:1–4 (emphasis added). Given that independent claim 1 is necessarily broad enough to include claim 3, it seems on this record that the functions recited in Limitation [1.o] necessarily can happen at different times, as opposed to, for example, only responses that are triggered by the so-called “prerequisite elements.” We encourage the parties to address this issue as a matter of claim interpretation in future briefing. Based on the current record, however, we determine that it is not necessary to provide an express interpretation of any claim terms at this stage of the proceeding. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,725,581 - PTAB · Jan 17, 2025 · IPR2024-01089 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1, 2, 9–11, 13–16, and 56–64 and 84, finding a reasonable likelihood of unpatentability under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 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 “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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” (Pet. 6) appears to be consistent with the problems and solutions in the ’212 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’212 patent.” Pet. 7.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“First, we determine, on the present record, that Petitioner has not improperly combined embodiments of Hotelling. Petitioner sufficiently shows that Hotelling describes a device which is “designed to recognize touch gestures applied to a touch screen” and which “recognizes the occurrence of gestures” and informs associated software agents of “the ¶ 135 (cited at Pet. 9, 24, 35). While Hotelling’s disclosed example of a touch vocabulary relates to the music player embodiment (Ex. 1004 ¶ 151, Figs. 27A–E), Hotelling generally teaches “[a] hand-held electronic device . . . designed to recognize touch gestures applied to a touch screen” and which upon receipt of gestures “executes instructions to carry out operations associated with the gestures.” Ex. 1004 ¶ 135 (cited at Pet. 8, 9, 24, 35). After considering Hotelling and the parties’ arguments and testimony, we determine that, on the present record, Petitioner has sufficiently shown that Hotelling’s general teachings regarding gestures received on a touch screen includes the recognition of touch gestures (pressing a button, sliding a finger or stylus, moving the entire device spatially) while Hotelling’s main page is being displayed. Ex. 1004 ¶¶ 84, 85, 87; Ex. 1003 ¶¶ 64–66. While we agree that the “touch vocabulary” provided in the “example” of Figures 27A-E (see Ex. 1004 ¶ 151) relates to a music player, we do not, on the present record, determine that Hotelling limits its disclosed recognition of touch gestures and execution of instructions to carry out operations associated with the gestures (including via a touch vocabulary) as relating only to the music player or to the other specific functionalities of the device, rather than to all user input GUIs.” slip op. at 18
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,671,212 - PTAB · Jan 16, 2025 · IPR2024-01088 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314(b); 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 “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute inter partes review as to the challenged claims of the ’758 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (internal citations omitted) (citing Ex. 1003 ¶¶ 41–53). For the purposes of institution, Patent Owner did not dispute this level of skill. Prelim. Resp. 6 (“Patent Owner does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.”) The portion of the definition proposed by the Petitioner requiring “a bachelor’s degree in computer science, computer engineering, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers” appears to be consistent with the problems and solutions in the ’758 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of the definition relating to the substitution of years of experience for a degree at this time. Additionally, we do not herein adopt Petitioner’s proposed additional requirement that one of ordinary skill “would have possessed extensive background knowledge and understanding of the pertinent technologies employed by the ’758 patent.” Pet. 7.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Patent Owner also notes that in the pending District Court Litigation, Petitioner contends that eight claim terms found in the challenged claims are indefinite: “performing an operation [in connection with / on] the first application icon,” “application-launch criteria,” “action-option-display criteria,” “operation criteria,” “movement criteria,” “action options,” “action option objects,” and “evaluating the first single-finger touch input against at least one of a plurality of criteria, including evaluating a duration of the first single-finger touch input against at least one of: one or more application-launch criteria, one or more action-option-display criteria, or one or more operation criteria, and further including evaluating a movement of the first single-finger touch input against one or more movement criteria.” Prelim. Resp. 6–7 (citing Ex. 2003, 9–75). Patent Owner further notes that, contrary to its position in the pending District Court Litigation, Petitioner does not assert that any of these terms are indefinite in this proceeding. Id. For institution and on our present record, we determine that none of these claim terms require construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need 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)). 3. Other Terms For institution and on our present record, no other claim terms require construction. See Nidec, 868 F.3d at 1017.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We determine that, on this record and for the purposes of institution, Petitioner has made a sufficient showing regarding motivation for its proposed combination of Chaudhri, Martyn, and Griffin. For the combination of Chaudhri and Martyn, we determine, on the present record and for the purposes of institution, that Petitioner has sufficiently shown support for the use of Martyn’s snap-shot menu with Chaudhri’s user interface. We acknowledge Patent Owner’s declarant’s examples of instances in which devices that incorporated “popular user interface features . . . did not achieve the same level of success because of poorly articulated design implementation.” Ex. 2001 ¶ 127 (cited at PO Resp. 23). However, on the present record, this evidence does not specifically address whether one of ordinary skill would have found such examples significant enough or relevant enough to the proposed combination to dissuade one of ordinary skill from considering such a combination to be reasonably likely to succeed, especially in light of the testimonial evidence before us that similar menus were often incorporated into GUIs similar to Chaudhri’s, which is adequately supported by reference to numerous examples. See Ex. 1003 ¶¶ 43–48, 64–65 (cited at Pet. 16). Additionally, we find compelling that Chaudhri describes a pop-up dialogue sub-menu for a different purpose (modifying the user interface object). See Ex. 1004 ¶¶ 274, 317, Figure 5LLL; Pet. 18–19; Ex. 1003 ¶ 69. On the present record, one of ordinary skill in the art would have found the use of the similar snap-shot menu from Martyn (offering different functionality) to be further prompted by this sub-menu, and not to have been redundant or “already solved” in Chaudhri, as Patent Owner argues (PO Resp. 26–27). See Pet. 18–19; Ex. 1003 ¶ 69. introduced to the combination of Chaudhri and Martyn to address a conflict that arises because Petitioner proposes a combination of Chaudhri and Martyn that “create[s] a conflict of assigning two functions to the same gesture.” PO Resp. 20. However, Petitioner provides a number of rationales to combine, and Petitioner’s argument that one of ordinary skill would have sought details from Griffin to implement Chaudhri’s teachings describing different user functionality being launched by user touches of different user durations (Pet. 19–21) adequately supports the use of the material from Griffin in the proposed combination. See Ex. 1004 ¶¶ 217, 218; Ex. 1002 ¶¶ 70–73, 75; see also PO Resp. 24 (describing “multiple types of gestures” used Chaudhri). While the proposed combination of Chaudhri and Martyn would, as Petitioner asserts, result in “three distinct operations invoked by duration-based touch gestures at an application icon” (Pet. 21), two of these distinct operations are found in Chaudhri’s teachings, and thus, on the present record, the motivation to look to Griffin does not arise only from the proposed combination of Chaudhri with Martyn. On the present record and for the purposes of institution, we determine that Petitioner has adequately shown that one of ordinary skill would have looked to Griffin to supply additional information regarding implementation of Chaudhri’s (and the Chaudhri and Martyn combination’s) use of parameters of a user’s touch, including duration, to enable different functionalities. Ex. 1006 ¶¶ 40, 53, Fig. 7; Ex. 1002 ¶¶ 70–73, 75. With respect to the use of the “press-and-hold” feature from Martyn, rather than other possibilities from Martyn for triggering its snap-shot menu and rather than adding a second touch point as Patent Owner suggests (PO Resp. 27–28, 32, 33 (citing Ex. 2001 ¶¶ 142–143, 156, 166, 172–173)), on to have been a suitable option. Pet. 15–16; Ex. 1003 ¶¶ 49–53, 63–64; Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021) (determining that a showing of the obviousness in “predictable use of prior art elements according to their established functions” (as per KSR, 550 U.S. at 417) requires only a showing that the combination be a suitable option, rather than a showing that it is the best option).” slip op. at 20
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,656,758 - PTAB · Jan 14, 2025 · IPR2024-01087 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–13, 15–35, and 37–43 on all asserted grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We determine Petitioner’s showing discussed above regarding Limitations [1.i–1.l] to be sufficient for institution. Petitioner’s showing in large measure relies on Hackborn’s straightforward description of changing the appearance of grass displayed in “live” wallpaper in response to a finger swipe in combination with Westerman’s disclosures of interpreting user input on touch screens as swipes. See, e.g., Pet. 22–23; Ex. 1004 ¶¶ 28, 33; Ex. 1005 ¶¶ 18–19. With regard to the contested Limitations [1.i and 1.k], we note particularly that Petitioner’s combination relies on Westerman’s disclosure of interpreting user inputs that exceed various thresholds as “a swipe event.” This showing is sufficient for institution to show the threshold determination required by Limitation [1.j]. See, e.g., Ex. 1005 ¶¶ 19; Pet. 22 (citing Ex. 1005 ¶ 19). Petitioner’s combination relies on Hackborn’s animation of the grass on the wallpaper “that makes the grass blades look as if the finger is actually contacting them as it drags across the screen of the device.” Ex. 1004 ¶ 33; see Pet. 23 (quoting Ex. 1004 ¶ 33). On this preliminary record, Petitioner’s position that “the farther the swipe, the more extreme the grass movement expected from Hackborn” naturally follows from Hackborn’s description. Pet. 23. As such, we determine Petitioner’s showing that the proposed combination of Hackborn and Westerman changes the grass appearance based at least in part of the magnitude of the swipe to be sufficient for institution for Limitation [1.k].” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 9 n.2 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Ex. 1003 ¶ 26.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we agree with the parties that no terms need to be construed expressly. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Hackborn’s mobile device with a touch screen able to display “live” wallpaper and Westerman’s techniques for interpreting swipe gesture inputs, including distinguishing between tap and swipe gestures using predetermined thresholds. Pet. 9–11, 12–13; see Pet. 9–14 (describing Petitioner’s “Hackborn-Westerman Combination”). Petitioner contends that “[a] POSITA reviewing Hackborn would have naturally looked to Westerman to better understand how to implement Hackborn’s teachings, for example, how to discern between different user inputs (e.g., tap or swipe).” Pet. 12–13 (citing Ex. 1003 ¶ 52). Petitioner contends that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner Petitioner proposes. Pet. 13–14. Specifically, Petitioner asserts that, because “recognizing predetermined touch inputs was known, and Hackborn and Westerman both describe the use of touchscreen devices and would have reasonably understood the combination of Hackborn and Westerman to be successful with no unexpected results.” Pet. 14 (citing Ex. 1003 ¶ 53; Ex. 1004 ¶ 28, Ex. 1005 ¶¶ 18, 19, 25, 41, 59, 61–64).” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,656,755 - PTAB · Jan 14, 2025 · IPR2024-01091 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR of claims 1, 27, 30, 32, 34, 59, 62, and 64 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d. Conclusion Regarding Asserted Obviousness over Kim In sum, for the reasons discussed above, Petitioner’s showing regarding claim 1 is sufficient for institution. Accordingly, having reviewed the Petition, Preliminary Response, and evidence cited therein, we determine that Petitioner has established a reasonable likelihood that Kim renders obvious claim 1. As such, Petitioner’s showing is sufficient to institute an inter partes review on all challenged claims on all asserted grounds. 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see SAS Inst. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Notwithstanding, we address other claims and other grounds below, particularly in response to Patent Owner’s preliminary arguments.” slip op. at 29
- Skill levelSkill level petitioner adoptedDecided for petitioner
“asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a related field, and would have had at least two years of relevant work experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof.” Pet. 10 n.4 (citing Ex. 1003 ¶ 26); Ex. 1003 ¶ 26. Dr. Cockburn also indicates that “[l]ess work experience may be compensated by a higher level of education and vice versa.” Id. Patent Owner indicates it “does not necessarily agree with all aspects of Petitioner’s proposed level of ordinary skill, but does not believe that resolving that level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 4. Dr. Surati indicates that his opinions provided in his declaration in support of Patent Owner’s Preliminary Response are “provided from the perspective of the POSITA” proposed by Dr.Cockburn. Ex. 2001 ¶ 38 (citing Ex. 1003 ¶ 26). consistent with the prior art of record. Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“standards for finding lexicography in a specification are exacting. Hill-Rom Services, Inc. v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotations omitted). As Patent Owner correctly notes, the specification states: In various embodiments, the contact pressure level may be represented by a touch state. In the context of the present description, a touch state refers to a predefined subset of the range of measurable contact pressures. For example, in one embodiment, contact pressure levels may be represented as one of four predefined touch states: no touch, light touch, medium touch, and heavy touch. Ex. 1001, 19:35–41; Prelim. Resp. 27 (quoting Ex. 1001, 19:35–41). Patent Owner, however, has not identified any words of manifest exclusion or restriction in that passage that indicate an intent to redefine the claim term. Rather than indicating the claims are to be restricted, the specification indicates how that the term “touch state” is to be understood in the descriptions presented in the specification. Ex. 1001, 19:36–37.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have been obvious over Kim and Bowens to be sufficient for institution. Petitioner generally relies on Kim’s description as discussed above. Pet. 62–68. Specifically, in its combination, Petitioner relies on Kim’s hold event and scaling operation for Limitations [1.g and 1.h]. Pet. 64–67. Petitioner additionally relies on Bowen as providing details on recognizing and acting on specific gestures on a user interface. See, e.g., Pet. 55. Petitioner provides reasons one of ordinary skill would have combined the references in the manner proposed by Petitioner. See, e.g., Pet. 53–62. Petitioner also provides reasons one of ordinary skill would have reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 60–61.” slip op. at 30
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,936,114 - PTAB · Dec 16, 2024 · IPR2024-00973 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on claim 4 over Reiner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We secondly conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera, Paper 12, at 13–14, 18–19; Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., 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. Guidance Memo, 3, 7–8. Thus, applying that guidance here, we do not deny institution in view of the Co-Pending Litigation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’157 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, physics, or a similar field and at least two years of experience designing semiconductor display devices, including LCD displays,” and “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 15–16; Ex. 1003 ¶¶ 75–76. “Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 14; Ex. 2001 ¶¶ 19–20. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’157 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,184,157 - PTAB · Oct 11, 2024 · IPR2024-00772 · APJ Monica S Ullagaddi · IPR · Institution
The Board instituted IPR on all challenged claims and petition grounds, found the merits threshold met, and granted Texas Instruments’ motion to join IPR2024-00001.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Analysis At this stage of the proceeding, we determine that Patent Owner’s statements made during prosecution of the ’195 patent appear to contradict its arguments in the present proceeding. See generally Prelim. Resp. Based on the present record, Patent Owner’s statements during prosecution support Petitioner’s argument tthat a graded dopant concentration is enough to teach aiding carrier movement in a particular direction. Patent Owner does not dispute that Kawagoe has a graded dopant concentration in the active region at this stage of the proceeding. Id. Patent Owner also does not dispute that Kawagoe’s transistor has carriers in the active region or that the graded dopant concentration of Kawagoe is lowered from the surface to the bottom substrate (Ex. 1007, Fig. 17). Id. At this stage of the proceeding, the evidence of record supports Petitioner’s position sufficiently to meet the reasonable likelihood threshold for institution. We decline to make further determinations, on this preliminary record, regarding the dispute surrounding this limitation, because the trial in the 00001IPR is the better proceeding in which to do so. Specifically, as compared to the preliminary phase of this case, the instituted trial in the 10 The examined claims of the ’195 patent generally recited “a unidirectional drift field drawing all minority carriers from said surface layer to said substrate.” Ex. 1016, 286. Patent Owner amended the claims of the ’195 patent to recite “maintain[ing] a single static unidirectional electric drift field to aid the movement of minority carriers from said surface layer to said substrate.” Id. 00001IPR affords the parties a better opportunity to fully and fairly brief, argue, and develop evidence in support of their positions. We observe, on this record, the dispute is inadequate to undermine the sufficiency of Petitioner’s evidence to support institution of review.” slip op. at 14
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because applications from which the ’481 patent claims priority were filed before this date, the pre-AIA version of § 103 applies. 2 U.S. Patent No. 6,043,114, issued Mar. 28, 2000 (Ex. 1007, “Kawagoe”). 3 U.S. Patent No. 6,163,877, issued Dec. 19, 2000 (Ex. 1014, “Gupta”). 4 U.S. Patent Publication No. 2003/0183856 A1, published Oct. 2, 2003 (Ex. 1006, “Wieczorek”). 5 Petitioner cites four volumes for Wolf: Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 1 – Process Technology, 2nd ed., (Lattice Press 2000) (Ex. 1008A); Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 2 – Process Integration, (Lattice Press 2000) (Ex. 1008B); Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 3 – The Submicron MOSFET, (Lattice Press 2000) (Ex. 1008C); and Stanley Wolf & Richard Tauber, Silicon Processing For The VLSI Era, Volume 4 – Deep-Submicron Process Technology, (Lattice Press 2000) (Ex. 1008D). petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 14– 35. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted 00001IPR proceeding, which we grant as further discussed below, Patent Owner’s argument that the Petition is timebarred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on the facts and circumstances discussed above, having reviewed the briefings of both parties, we determine Petitioner has established good cause for joining the 00001IPR. Specifically, we find that joining Petitioner to the 00001IPR is unlikely to require any delay or modification to the scheduling order already in place for the 00001IPR. We also determine that Patent Owner will not be prejudiced unduly by the joinder of this proceeding. Thus, we determine that granting the Motion for Joinder under these circumstances would help “secure the just, speedy, and inexpensive resolution” of these proceedings. See 37 C.F.R. § 42.1(b). For the above reasons, we grant Petitioner’s Motion for Joinder and join Petitioner as a party to the 00001IPR.” slip op. at 19
NonePatents in suitUS 10,734,481 - PTAB · Oct 11, 2024 · IPR2024-00771 · APJ Grace Karaffa Obermann · IPR · Institution
The Board instituted IPR on claims 1–6 of the ’195 patent on all asserted grounds and granted Texas Instruments’ motion to join the Cirrus IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the Preliminary Response in the instant case includes arguments pertaining to the sufficiency of the asserted prior art references, which were not raised in the preliminary response in the Cirrus IPR, we briefly address below the patentability of the challenged claims.” slip op. at 6
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“II. TIMELINESS OF THE PETITION UNDER 35 U.S.C. § 315(B) Pursuant to 35 U.S.C. § 315(b), “[a]n inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner argues that the Petition is untimely under 35 U.S.C. § 315(b) because Petitioner is in privity with time-barred entities. Prelim. Resp. 10– 30. However, 35 U.S.C. § 315(b) also provides that the one-year time bar “shall not apply to a request for joinder under subsection (c).” See also 37 C.F.R. § 42.122(b). Because the Petition is accompanied by a timely request for joinder (Paper 2) to the instituted proceeding (IPR2024-00017), which we grant as further discussed below, Patent Owner’s argument that the Petition is time-barred under 35 U.S.C. § 315(b) is moot, irrespective of whether Petitioner is in privity with time-barred entities.” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“B. Whether to Join Petitioner as a Party to the Cirrus IPR Joinder may be authorized when warranted, but the decision to grant joinder is discretionary. See 35 U.S.C. § 315(c); 37 C.F.R. § 42.122. A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013- 00004, Paper 15 (PTAB April 24, 2013). As the moving party, Petitioner bears the burden of proving that it is entitled to the requested relief. 37 C.F.R. § 42.20(c). As an initial matter, we find the Motion for Joinder meets the timing requirements of 37 C.F.R. § 42.122(b) because Petitioner filed it on April 4, 2024, no later than one month after the Cirrus IPR was instituted on May 1, 2024.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“5. “Aid the Movement of Minority Carriers” Patent Owner argues that the Petition fails to show that the applied prior art references disclose the claim limitations “requiring ‘aid the movement of minority carriers,’” as twice recited in claim 1. Prelim. Resp. 8. Patent Owner summarizes this dispute as follows: The challenged patent discloses and claims a semiconductor device with (among other things) a “drift layer having a graded concentration of dopants . . . [and] further having a first static unidirectional electric drift field to aid the movement of minority carriers.”[] The Petition should not be instituted, because (among other deficiencies) it fails to show that the prior art discloses the “aid the movement of minority carriers” claim limitation. Rather than pointing to anything in the prior art that would teach this claim limitation, the Petition assumes that any “graded concentration of dopants” would necessarily “aid the movement of minority carriers.” The Petition contains no analysis explaining why the “graded concentration of dopants” in the prior art meet the “aid the movement of minority carriers” limitation, apart from the fact that they are “graded concentration of dopants.” In other words, Petitioner reads the “aid the movement of minority carriers” limitation out of the claims completely. Id. at 1–2. Patent Owner includes additional details in support of its view that the asserted prior art fails to establish obviousness of the “aid carrier movement” limitations of claim 1. Prelim. Resp. 1–10.” slip op. at 8
§ 102 anticipation§ 103 obviousnessPatents in suitUS 8,421,195
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.