- US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing grantedPTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing
The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2
NonePatents in suitUS 11,061,190 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · May 6, 2024 · IPR2024-00144 · APJ Hubert C Lorin · IPR · Institution
The Board instituted review of claims 1–21 on all petition grounds and granted Apple’s motion to join the Samsung IPR, subject to participation limits.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“challenged claims and all asserted grounds of unpatentability. Samsung IPR, Paper 9; see also Samsung IPR, Paper 2 (the “Samsung Petition”). Petitioner here challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Samsung IPR. Compare Pet. 1, with Samsung Petition, 2. Petitioner also relies on an identical declaration from the same declarant as relied upon by the petitioner in the Samsung IPR. Mot. 6 & n.2; Ex. 1003. Because the grounds of unpatentability in the instant Petition are identical to those in the Samsung IPR, for the same reasons stated in our Decision to Institute in the Samsung IPR we institute inter partes review in this proceeding on the grounds presented in the Petition. See Samsung IPR, Paper 9, 41-71 (analyzing challenges in the Samsung Petition).” slip op. at 8
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“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). A motion for joinder should (1) set forth the reasons joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; and (3) explain what impact (if any) joinder would have on the trial schedule for the existing review. See Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013). joinder is appropriate because, as set forth above, the Petition (1) is materially the same as the Samsung Petition, (2) contains the same grounds based on the same evidence, and (3) would promote efficiency. See Mot. 3, 6. Petitioner represents that joinder will not unduly burden Patent Owner or negatively impact the Samsung trial schedule. Id. at 7.” slip op. at 9
NonePatents in suitUS 9,369,545 - Infineon Technologies AG v. Amatech Group LimitedRehearing grantedPTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing
On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
§ 103 obviousnessPatents in suitUS 9,165,240 - PTAB · May 12, 2023 · IPR2023-00129 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 21, 22, 25, 26, 28–30, 32–36, 40–44, 47–49, 52, 53, 56–59, 62, 63, 65–68, 71–73, 77, 78, 81, 82, 85, 86, and 88–91 on all petition grounds, and granted …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 10–116, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 5. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the supporting declaration of Dr. Bretschneider submitted by Feit Electric adopts the opinions of Cree Lighting’s expert, Dr. Lebby, in full, with minor clarifications . . . that are immaterial to the broader analysis.” Id. at 8, n. 1; see also Ex. 1021 (declaration of Dr. Bretschneider). Petitioner further states that it will rely on the declaration of Dr. Bretschneider “only in the event that Cree Lighting is terminated from the proceedings.” Mot. 8, n. 1. Patent Owner waives its preliminary response, and it does not dispute Petitioner’s arguments or evidence. See generally Waiver.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that its Petition is “essentially a copy of the Cree Lighting Petition.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR.” slip op. at 6
NonePatents in suitUS 6,465,961 - PTAB · May 12, 2023 · IPR2023-00123 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 21–91 listed in the order on all petition grounds and granted joinder in IPR2022-00847.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW The Petition in this proceeding asserts the same grounds of unpatentability as the ones on which we instituted review in the Cree IPR. Compare Pet. 12–124, with Cree Dec. 10, 45–46. Indeed, Petitioner contends that the Petition and evidence Petitioner relies upon is “identical to the grounds in the Cree IPR petition.” Mot. 1. Petitioner acknowledges that the Petition relies on a different expert; however, Petitioner asserts that “the expert declaration of Dr. Christian Wetzel (Ex. 1021, “Wetzel Decl.”), [] is substantively identical to the declaration put forth in the Cree IPR.” Id. at 2. Petitioner further states that Dr. Wetzel agrees with the opinions of Cree’s expert and “adopts them as his own.” Id. at 2, n. 1.” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition in this case asserts the same unpatentability grounds on which we instituted review in the Cree IPR. See Mot. 5. Petitioner states that it uses “the same arguments, analysis, evidence, and grounds of unpatentability as the Cree IPR.” Id. Thus, this inter partes review does not present any ground or matter not already at issue in the Cree IPR. Petitioner agrees that, if joinder is granted, it will have a “true understudy role.” Reply. 1–2. Petitioner agrees to various restrictions as a true understudy and further agrees to any further limitations the Board may impose. Reply 2; Mot. 7–8 (“Petitioner will also abide by any additional conditions the Board deems appropriate”). Along these lines, Petitioner will abide by the following conditions so long as Cree is actively participating in this proceeding: 1. Petitioner will not take any depositions or otherwise participate in the proceeding (Reply 2);” slip op. at 6
NonePatents in suitUS 6,465,961 - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
The Board entered adverse judgment against Patent Owner and cancelled claim 1 based on statutory disclaimers; alternatively, it held claim 1 unpatentable on every asserted ground.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
- BurdenUnpatentable
“We conclude that Patent Owner has forfeited any arguments opposing the information advanced in the Petition with respect to the other asserted grounds of invalidity. We adopt the reasoning set forth in the Petition with respect to those grounds. See Pet. 23–45 (arguments and evidence directed to publication and accessibility of SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent), 73–88 (arguments and evidence directed to the grounds that assert SGQR, GrabPay, Digital Debit Video, and Digital Debit Patent). On this record, Petitioner demonstrates by a preponderance of the evidence that the subject matter of the challenged claim would have been obvious based on the other grounds asserted in the Petition. Id.” slip op. at 9
§ 102 anticipation§ 103 obviousness - Early Warning Services, LLC / Samsung Electronics Co., Ltd. v. Wepay Global Payments LLCAdverse judgmentPTAB · Feb 9, 2023 · PGR2022-00031 · APJ Grace Karaffa Obermann · PGR · Adverse judgment
Adverse judgment was entered after Patent Owner disclaimed the sole claim; alternatively, the claim was held unpatentable on the asserted anticipation and obviousness grounds.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“On October 5, 2022, Patent Owner filed a statutory disclaimer of the first embodiment, including Figures 1 and 2. Ex. 1106; Paper 32, 2. On January 26, 2023, Patent Owner filed a statutory disclaimer of the second embodiment, including Figures 3, 4, and 5. Ex. 1107; Paper 32, 2. Patent Owner successfully paid the statutory disclaimer fees in connection with both disclaimers. Ex. 1106, 4; Ex. 1107, 4; Paper 32, 2–3. Based on the information presented, we find that Patent Owner, by disclaiming all figures and embodiments described in the ’702 patent, has disclaimed the entire scope of the sole design claim at issue, such that no challenged claim remains in this proceeding. Specifically, in that regard, the ’702 patent claims and describes two embodiments, where the first embodiment is depicted in Figures 1 and 2, and the second embodiment is depicted in Figures 3, 4, and 5. Ex. 1001, code (57). The statutory disclaimers, taken together, disclaim both embodiments and all five figures set forth in the ’702 patent. Exs. 1106, 1107. Accordingly, we determine that adverse judgment against Patent Owner based on the disclaimers is warranted. 37 C.F.R. §§ 42.73(b)(1), 42.73(b)(2); Paper 32, 3.8” slip op. at 6
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“In particular, we find that Reddy discloses a design having substantially the same overall appearance as the claimed design, as shown in Petitioner’s comparison illustration reproduced below. Paper 22, 10 (citing Pet. 63). The above illustration compares the claimed design in the upper half to Reddy’s design in the lower half. Both designs include an image of a Three Square Arrangement9 followed by an image of “a $0.00 in practically identical style and font.” Id. at 10–11 (quoting Pet. 64). We determine that Petitioner proves by a preponderance of the evidence, moreover, “that ‘the overall visual effect of the claimed design,’ when compared to ‘the design disclosed in Reddy[,] would be substantially the same to an ordinary observer.’” Id. at 11 (alteration in original) (citation omitted); Pet. 64–67 (and evidence cited therein). Based on the full trial record, we agree with Petitioner and find that “there is no material difference” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“To the extent “any ‘slightly different spacing of the squares,’ as between the claimed and prior art designs,” is not de minimus, we find “that the ordinary designer would have modified Reddy’s design to mirror the claimed design” in order “to increase the amount of data” contained in the code. Paper 22, 13 (quoting Pet. 72 (citing Ex. 1002 ¶ 97)). The ordinary designer, considering Reddy alone, “would find the claimed ‘design as a whole has substantially the same overall visual appearance as the Reddy design,’ as so modified.” Id. (quoting Pet. 73 (citing Ex. 1002 ¶ 99)). Based on the full trial record, we determine that Reddy renders the challenged claim unpatentable as obvious.” slip op. at 9
§ 102 anticipation§ 103 obviousness - PTAB · Dec 20, 2022 · PGR2022-00045 · APJ Grace Karaffa Obermann · PGR · Institution
The Board instituted post-grant review of the sole claim on the Petition’s grounds and granted Samsung’s motion to join PGR2022-00031.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS Before deciding joinder questions, the Board first determines whether the petition “warrants the institution of a post-grant review under section 324.” See 35 U.S.C. §§ 325(c), 324(a) (stating that the petition “would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable”); see also Facebook, Inc. v. Windy City Innovations, LLC, 973 F.3d 1321, 1332 (Fed. Cir. 2020) (interpreting joinder requirements in inter partes review under 35 U.S.C. §§ 314(a), 315(c)). When a second petition is a “me-too” or “copycat” petition, the institution analysis may include a General Plastic analysis. See Apple, Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (PTAB Oct. 28, 2020) (designated as precedential on December 4, 2020) (“Uniloc”); General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19, at 16 (PTAB Sept. 6, 2017) (precedential as to § II.B.4.i).” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Although the decision in Uniloc informs that a petitioner’s failure to adequately address these factors may weigh in favor of discretionary denial, this case is distinguishable because Petitioner has not previously filed a petition challenging the validity of the ’702 patent claim. See, e.g., Uniloc, Paper 9 at 11. The Petition is substantively the same as the petition in PGR 031 and includes notice of Petitioner’s intention to file the joinder motion. See Pet. 1; Mot. 1–2. This factor is neutral given Petitioner’s willingness “to proceed solely on the grounds, evidence, and arguments advanced, or that will be advanced, in” PGR 031. Mot. 1– 2.” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder must be filed “no later than one month after the institution date of any post-grant review for which joinder is requested.” 37 C.F.R. § 42.222(b). Petitioner timely filed the Motion for Joinder on October 28, 2022, within one month of the Decision of Institution in PGR 031. See Mot. 14; PGR 031, Paper 22. The Petition indicates Petitioner’s intent to file the Motion for Joinder. See Pet. 1. The Petition is substantively identical to the petition in PGR 031 and, accordingly, presents no new grounds. Mot. 6–8. Because Petitioner seeks only to join the first proceeding as a party, and makes no arguments in its Petition that differ from those already being addressed in PGR 031, we grant the Motion for Joinder. In so doing, we take account of Petitioner’s assertions that joinder will not impact the trial schedule because there are no new grounds and, furthermore, Petitioner “consents to any trial schedule adopted in” PGR 031. Mot. 7–8. The Board agrees that joinder should not impact the trial schedule.” slip op. at 11
Discretionary denial - Stmicroelectronics, Inc. v. The Trustees Of Purdue UniversityAdverse judgmentPTAB · Sep 29, 2022 · IPR2022-00309 · APJ Jo-Anne M Kokoski · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after disclaimer of all claims, entering judgment against claims 1, 6, 7, and 10-12 and terminating the proceeding.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request adverse judgment against itself at any time during a proceeding.” 37 C.F.R. § 42.73(b). In addition, “[a]ctions construed to be a request for adverse judgment include . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” Id. § 42.73(b)(2). Because Patent Owner disclaimed all claims in the ’112 patent, there are no challenged claims remaining in the proceeding, and we grant Patent Owner’s Request for Adverse Judgment.” slip op. at 2
NonePatents in suitUS 8,035,112
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.