- PTAB · Jan 28, 2025 · IPR2024-01084 · APJ Jeffrey S Smith · IPR · Institution
Instituted IPR on claims 1–4, 8–18, 22–30, and 34–39; Petitioner showed a reasonable likelihood that Shiplacoff, alone or combined with Nan, renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution, we are sufficiently persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing in showing that Shiplacoff renders obvious claim 1.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). With respect to the first issue, previously presented art includes, among other things, “art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. With respect to the second issue, institution generally will be denied if a “petitioner fails to make a showing of material error,” and “[i]f reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.” Id. at 8–9. “[T]his framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 29
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“2. Reasons to Combine Shiplacoff and Nan Petitioner contends that a person of ordinary skill in the art would have implemented the touch gestures of Nan in Shiplacoff’s device that includes a touch screen for the benefits of avoiding latency and not displaying on-screen controls. Pet. 43–44. Petitioner contends that using the gestures of Nan, which include factors such as length, speed, hold time, and number of fingers, to execute a change from one of Shiplacoff’s display modes to another, does no more than yield predictable results. Id. at 43, 45. We are sufficiently persuaded that Petitioner has shown a reason to use the edge gestures of Nan to switch from one of Shiplacoff’s display screens to another.” slip op. at 26
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have had a bachelor’s degree in computer science, computer engineering, electrical engineering, human-computer interaction, or a comparable field and at least two years of professional experience in the design and development of graphical user interfaces (GUIs), human-computer interfaces, or equivalents thereof. Pet. 4 (citing Ex. 1003 ¶ 22). Petitioner’s declarant, Loren Terveen, Ph.D., testifies that “[s]uch experience could be obtained through research and study in a graduate program or through comparable exposure through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 22. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 7.” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,649,578 - PTAB · Jan 28, 2025 · IPR2024-01083 · APJ Jeffrey S Smith · IPR · Institution
The Board instituted inter partes review of claims 1–3, 7, 9, 10, and 101 on the asserted §103 ground over Ahn, Chaudhri, and Hinckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–3, 7, 9, 10, and 101 of the ’413 patent on the ground of unpatentability asserted in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“through industry employment, and additional years of experience could substitute for the advanced-level degree.” Ex. 1003 ¶ 30. Patent Owner notes that it does not agree with Petitioner’s proposed level of ordinary skill, “but does not believe that resolving the level is necessary to resolve the issues raised in this preliminary response.” Prelim. Resp. 6. As Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition for purposes of this Decision. Also, the level of ordinary skill in the art can be evidenced by the references cited, and we find it commensurate with the cited references in this proceeding. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Petitioner and Patent Owner contend that no claims need to be construed in order to resolve a controversy. Pet. 4– 5; Prelim. Resp. 6–7. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial. We highlight that for the term “a magnitude of the blurring,” Patent Owner contends that “the amount of surface area that a translucent menu is displayed over a screen is not a magnitude of the blurring,” but provides no further construction of the term, other than a statement that even under Petitioner’s interpretation of “blurring,” the grounds are deficient. Prelim. Resp. 32–33 & n.4. On the present record, Petitioner’s proposed construction appears correct, and for purposes of institution, we apply this proposed construction of “a magnitude of the blurring” as discussed below in our analysis of limitation [1.d.ii]; the construction of this term may be addressed by the parties as this inter partes review proceeds.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“For purposes of this Decision, we find Petitioner cites sufficient evidence to support its contention that a person of ordinary skill in the art would have had a reason to combine the teachings of Ahn and Chaudhri.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,642,413 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 48. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 20–21. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868 - PTAB · Jan 27, 2025 · IPR2024-01121 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution under Fintiv, finding that the parallel district court proceedings would likely address patentability before a final written decision and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In Fintiv, the Board explained that “cases addressing earlier trial dates as a basis for denial under NHK Spring have sought to balance considerations such as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5. Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors consider the following: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Claim Construction In interpreting the claims of the ’402 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties each contend that resolution of this proceeding does not require that the meaning of any claim term be made explicit. See Pet. 15; Prelim. Resp. 8. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“1. Level of Ordinary Skill As part of our compelling-merits analysis, we consider the level of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). Petitioner proposes the following: [A] person of ordinary skill in the art at the time of the alleged invention of the ’402 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 73. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 21–22. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 17
- BurdenNot reached
“outset, we note that the language of claims 1 and 12 is clear in reciting the presence of two distinct signals, i.e., a control signal and a reference signal, and that it is the control signal that “triggers” transmission of the reference signal. See Ex. 1001, 14:5–6, 60–62. Patent Owner credibly argues that the “two-step embodiment” of Figure 10 of the ’402 patent, and in particular steps 1005 and 1010, describe the control and reference signal transmissions that are encompassed by claims 1 and 12. See Prelim. Resp 8–10. Patent Owner also credibly argues that the Figure 10 embodiment is distinct from other disclosed embodiments, including the “single-step embodiment” of Figure 8. See id. at 10–11. Patent Owner further explains reasonably that the content of column 6 of the ’402 patent on which Petitioner relies has a more “natural reading” in distinguishing between separate transmission of a “control signal” that “triggers” separate transmission of a “reference signal” as described in connection with Figure 10 as juxtaposed with transmission of a “control channel,” which is distinct from a control signal, and a “reference signal” that may constitute a single transmission, as is described in conjunction with Figure 8. See id. at 16–17. It logically follows that if, as Patent Owner credibly argues, the claims of the ’402 patent do encompass the latter transmission scheme, rather than the former, then Petitioner’s reliance on Moon, as presented in its Petition, is insufficient to account for those claims. On this record, we need not decide whether Petitioner would likely prevail on the above-noted issues as Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. Because, as noted above, Patent Owner has identified potentially dispositive gaps or flaws in Petitioner’s apprehension as to what is adequate in Moon’s disclosure to account for the claims of the ’402 patent, Petitioner’s proposed grounds cannot be said to rise to the level of a “compelling” meritorious challenge.” slip op. at 22
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,148,402 - PTAB · Jan 27, 2025 · IPR2024-00965 · APJ Zhenyu Yang · IPR · Institution
Instituted review of claims 1–6 on all asserted grounds because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on the ground raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“We agree with Patent Owner that testimony from a “custodian with any personal knowledge of arXiv.org or its regular practices” would have strengthened Petitioner’s argument that Gloor is prior art. See Prelim. Resp. 20; see also, e.g., Murray & Poole Enters. LTD v. Institut De Cardiologie De Montreal, IPR2023-01064, Paper 49 (PTAB Jan. 14, 2025) (considering testimony regarding the internet archive service known as the Wayback Machine (https://web.archive.org/) in determining public accessibility). At the institution stage, however, Petitioner needs to show that Gloor qualifies as prior art by “a reasonable likelihood” standard. See Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential) (“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.”). We find that, for purposes of institution, Petitioner has met its burden to show a reasonable likelihood that Gloor was publicly accessible before the priority date of the ’200 patent. To prevail in this inter partes review, Petitioner must meet the preponderance of the evidence standard. See 35 U.S.C. § 316(e). Thus, we encourage the parties to fully develop the record during trial to facilitate the ultimate resolution of this issue.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“institution under § 325(d). Prelim. Resp. 21–29. Under 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” Our § 325(d) analysis employs a two-prong framework: (1) whether the arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 11
§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 11,768,200 - PTAB · Jan 27, 2025 · IPR2024-01085 · APJ Barbara A Benoit · IPR · Institution
The Board instituted IPR on claims 1–4, 6–10, 17, 19, 22–26, 28–30, 32, 33, 36, 41, 48, 58–62, 64, 65, 67, 69, 70, 73, 77, 82, and 83 on all asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314, which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“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. Davis 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 ¶ 24 (citing Ex. 1003 ¶ 26). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the level reflected by the ’580 patent and the prior art of record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, we adopt Petitioner’s definition of the level of ordinary skill for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner contends “no claim terms need be construed to resolve issues of controversy in the present Petition.” Pet. 2. Similarly, Patent Owner indicates that no formal constructions are necessary at this point in the proceeding. Prelim. Resp. 3. We agree with the parties that no terms need to be construed expressly for this Decision. We discuss claim interpretation to the extent necessary in the context of analyzing the asserted grounds to determine whether to institute trial.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner contends that “Petitioner’s alleged motivation for modifying Ramos’ Zlider to be transparent is superficial and conclusory.” Prelim. Resp. 24; see generally Prelim. Resp. 24–26. As noted above, Petitioner relies on evidence from Ording itself and Dr. Cockburn’s testimony that relies on evidence to support its conclusion. Thus, we do not agree with Patent Owner that Petitioner’s motivation is insufficient for institution. Patent Owner also argues, relying on Dr. Davis’ declaration testimony, that the Vernier on a semitransparent Zlider widget would be “completely illegible” in some circumstances “rendering the very core of Ramos’ work unusable.” Prelim. Resp. 24–25 (citing Ex. 2001 ¶ 88); see Ex. 2001 ¶ 88 (not adding reasoning or evidence beyond that in the Patent Owner Preliminary Response). On this preliminary record, it would appear that when the Zlider widget and the portion of the image underlying the Zlider widget are the same color, the semitransparent Zlider widget may not work as well as when the Zlider widget and the underlying image are different colors. That does not outweigh, for purposes of determining whether to institute trial, the prior art evidence that Petitioner offers of the from Ording and other prior art references on which Dr. Cockburn’s declaration testimony relies. Ex. 1003 ¶ 66 (citing Ex. 1025 ¶¶ 77, 94, 101; Ex. 1026 ¶¶ 153, 162); see 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 requires only a showing that the combination be a suitable option, rather than a showing that it is the best option). Petitioner also contends, relying on declaration testimony from Dr. Cockburn, that one of ordinary skill would have had a reasonable expectation of success in combining the references in the manner proposed by Petitioner. Pet. 33–34. Petitioner contends that implementing the Zlider widget “described in the Ramos Paper and Ramos Video in a device, as taught by Ording, would have required only routine knowledge well within the skill of a POSITA” and would involve “combining prior art elements according to known methods to yield the predictable results” described by Petitioner’s proposed combination of the references. Id. (citing Ex. 1003 ¶ 67). Petitioner’s support for reasons one of ordinary skill would have made” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,649,580 - PTAB · Jan 27, 2025 · IPR2024-00964 · APJ Zhenyu Yang · IPR · Institution
The Board instituted IPR on claims 1–8 based on both asserted obviousness grounds: Parameswaran with Gloor and Parameswaran with Bentley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Accordingly, we institute inter partes review of all challenged claims based on the ground raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“We agree with Patent Owner that testimony from a “custodian with any personal knowledge of arXiv.org or its regular practices” would have strengthened Petitioner’s argument that Gloor is prior art. See Prelim. Resp. 27; see also, e.g., Murray & Poole Enters. LTD v. Institut De Cardiologie De Montreal, IPR2023-01064, Paper 49 (PTAB Jan. 14, 2025) (considering testimony regarding the internet archive service known as the Wayback Machine (https://web.archive.org/) in determining public accessibility). At the institution stage, however, Petitioner needs to show that Gloor qualifies as prior art by “a reasonable likelihood” standard. See Hulu, LLC, v. Sound View Innovations, LLC, IPR2018-01039, Paper 29, 13 (PTAB Dec. 20, 2019) (precedential) (“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.”). We find that, for the purposes of institution, with Dr. Gloor’s declaration and the supporting exhibits attached therein, Petitioner has met this burden. To prevail in this inter partes review, Petitioner must meet the preponderance of the evidence standard. See 35 U.S.C. § 316(e). Thus, we encourage the parties to fully develop the record during trial to facilitate the ultimate resolution of this issue.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“detailed analysis to support its argument that the combination of Parameswaran and Gloor teaches or suggests each limitation of claim 1. Pet. 23–36. Petitioner also contends that an ordinarily skilled artisan would have been motivated combine the teachings of the two references and would have had a reasonable expectation of success in doing so. Id. at 36–45. Patent Owner counters that the combination does not teach or suggest two limitations, namely the amplifying and discarding steps of the method. Prelim. Resp. 18–24. Patent Owner also challenges Gloor’s prior art status. Id. at 24–28. Based on the current record, we find Petitioner’s argument with respect to the amplifying and discarding steps more persuasive. With respect to the remaining limitations, we find persuasive Petitioner’s analysis on the prior art’s teachings. We also find persuasive Petitioner’s analysis on the motivation to combine and reasonable expectation of success. For the purposes of institution, we adopt those analyses as our own. We address Patent Owner’s counterarguments below.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“cross-over events (id. at 18–21). Based on the current record, we find Petitioner’s argument more persuasive. Petitioner relies on the combination of Parameswaran and Gloor as teaching the amplifying step. See Pet. 31–33. As such, Patent Owner cannot show non-obviousness “by attacking references individually.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). Patent Owner argues that “because Parameswaran used pyrosequencing on the surface of beads in a Roche 454 sequencer, it does not disclose the formation of clusters.” Prelim. Resp. 21 (citing Pet. 31). Petitioner, however, relies on Gloor for teaching “amplifying said nucleic acid templates on a surface of a flow cell thereby to form clusters.” Pet. 31–32. Patent Owner does not challenge this reliance. See generally Prelim. Resp. Patent Owner contends that Petitioner “equat[es] the claimed chimeric sequences with ‘mismatched’ or ‘misassigned’ sequences containing an ‘unexpected’ pair of forward and reverse barcode motifs identified in Parameswaran.” Prelim. Resp. 18–19. But, according to Patent Owner, “Petitioner does not point to any disclosure in Parameswaran identifying these “mismatched” motifs as chimeric sequences—as opposed to mere sequencing or sample handling error—nor does Petitioner cite any disclosure in Parameswaran regarding such sequences resulting from cross-over events.” Id. at 19. We find Patent Owner’s characterization of Petitioner’s argument inaccurate. As we understand it, Petitioner does not “equat[e]” the claimed chimeric sequences with “mismatched” sequences in Parameswaran. Instead, as Patent Owner acknowledges, “Petitioner argues that ‘sequences with mismatched barcode motifs’ in Parameswaran ‘include chimeric sequences resulting from cross-over events.’” Id. (quoting Pet. 32) (emphasis added).” slip op. at 14
§ 102 anticipation§ 103 obviousnesscites PhillipsPatents in suitUS 11,041,852 - 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
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.