- PTAB · Feb 26, 2025 · PGR2024-00050 · APJ Jeffrey N Fredman · PGR · Institution
The Board instituted PGR on claims 1–31, finding it more likely than not that at least one challenged claim is unpatentable on the grounds raised in the Petition.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(c) (2018); 37 C.F.R. § 42.4(a) (2023). Institution of a post-grant review is authorized by statute when “the information presented in the petition . . . would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). When instituting post-grant 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. 37 C.F.R. § 42.208(a).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the parties’ arguments, we find that Petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims in the ’339 patent, and that the Becton Dickinson factors, when considered as a whole, do not weigh in favor of denying institution of post-grant review under 35 U.S.C. § 325(d). Accordingly, we decline to deny institution under § 325(d).” slip op. at 16
Discretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,920,339 - PTAB · Jan 28, 2025 · IPR2024-01077 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 11, and 13–20 based on the Schröder and Mestas obviousness challenge; it did not decide whether the Yuen and Mestas challenge met the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that follow, we determine that the reasonable likelihood standard is met, and we institute an inter partes review.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’859 Patent Specification and the asserted prior art references.” slip op. at 22
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute an inter partes review. Pet. 8; Prelim. Resp. 21. Nevertheless, there appears to be a dispute about the meaning of the term, “ring,” which we discuss below for purposes of providing guidance.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,139,859 - PTAB · Jan 28, 2025 · IPR2024-01078 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–6, 11–15, and 38–43 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Schröder and Mestas.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition and the Preliminary Response shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–6, 11–15, and 38–43 based on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In view of the parties’ arguments and evidence, we do not agree with Patent Owner’s characterization of Mestas as cumulative. Noting that the Office allowed claims of the ’686 Application over U.S. Patent Application Publication No. 2013/0106603 (Ex. 2006, “Weast”), Patent Owner argues that Mestas discloses the same wristband as Weast. Prelim. Resp. 10–12, 58. Patent Owner overlooks that the Office’s consideration of Weast in the prosecution of the ’686 Application occurred after the ’953 patent issued, which does not show consideration of Weast’s or Mestas’s wristband configuration in the allowance of the ’953 patent’s claims. Ex. 2009, 1, 3; Ex. 1001, code (45); Prelim. Resp. 10–12, 58.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 7 (Ex. 1002 ¶ 29). Patent Owner does not dispute Petitioner’s explanation of the level of skill in the art. See Prelim. Resp. 12. Based on the testimony of Dr. Anthony, we agree with Petitioner’s stated understanding of the level of ordinary skill in the art. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’953 Patent Specification and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner expresses that it “does not believe that any term requires express construction.” Pet. 8. Patent Owner does not dispute this assertion. See generally Prelim. Resp. At this stage, we need not and do not construe expressly any claim language. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,281,953 - PTAB · Dec 12, 2024 · PGR2024-00039 · APJ Elizabeth M Roesel · PGR · Institution
The Board instituted PGR on claims 1–17, finding the Schröder obviousness challenge to claim 1 met the institution threshold; it did not reach the remaining challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discussion Part I of the Advanced Bionics framework asks whether the same or substantially the same art was previously presented to the Office or whether the same or substantially the same arguments were previously presented to the Office. Advanced Bionics, Paper 6 at 8.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“After considering the parties’ arguments and evidence, we determine that Petitioner’s showing for the printed circuit board of claim element 1[c], as summarized above, is sufficient for purposes of granting institution of a post-grant review. For purposes of institution, Petitioner’s contentions are adequately supported by Schröder, which describes inlay 12 as a “flexible carrier material, e.g. PET, Kapton, etc.” and a “carrier” for the antenna, chip module, and “at least one further electronic component,” as well as Schröder’s Figures 7 and 8, which depict inlay 12 between ring halves 16 and 18. Ex. 1007, 12:28–42, 12:48–52, 12:61–65, 13:23–25. We have considered Patent Owner’s argument that Schröder’s inlay 12 “is merely a substance for holding the coil in place, not a printed circuit board,” as well as Patent Owner’s argument contrasting Schröder’s description of inlay 12 with the express disclosure of “a circuit on a circuit board” elsewhere in the reference. Prelim. Resp. 29–30 (emphasis omitted; citing Ex. 1007, 8:57–59, 22:48–50; Ex. 20119). These arguments raise a serious issue about whether a POSITA would have understood Schröder’s inlay 12 as teaching a printed circuit board. This issue would benefit from further development at trial.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“E. Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal processing. A higher level of education or skill can substitute for less experience, and vice versa. Ex. 1002 ¶ 29. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’702 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 7; Prelim. Resp. 21.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,874,702 - PTAB · Dec 6, 2024 · IPR2024-00928 · APJ Neil T Powell · IPR · Institution
The Board instituted review of claims 1–5, 11–13, and 16–18 on all grounds, finding a reasonable likelihood that the LeBoeuf challenge to claim 1 would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1–5, 11–13, and 16–18 based on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Objective indicia / secondary considerations › NexusNot reached
“For objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence.” Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1210 (Fed. Cir. 2023). “A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention.” Id. slip op. at 16
§ 103 obviousnesscites PhillipsPatents in suitUS 9,582,034 - PTAB · Dec 6, 2024 · PGR2024-00030 · APJ Elizabeth M Roesel · PGR · Institution
Instituted PGR of claims 1–10 and 12–18; Petitioner met the institution threshold for claim 1 based on obviousness over Schröder.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In applying § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). We also consider the non-exclusive factors set forth in Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (precedential in relevant part), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, Paper 6 at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.” slip op. at 12
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a four-year degree in electrical engineering, mechanical engineering, biomedical engineering, optical engineering, or related field of study, and two years of experience in academia or industry studying or developing physiological monitoring devices such as non-invasive biosensors. A POSITA would have been familiar with sensor system design and signal experience, and vice versa. Ex. 1002 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’178 Patent Specification and the asserted prior art references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We agree with the parties that it is not necessary for us to provide an express construction for any claim term for purposes of determining whether to institute a post-grant review. Pet. 8; Prelim. Resp. 25.” slip op. at 17
- Expert testimonyPetitioner expert creditedOther
“Petitioner relies on Dr. Anthony’s testimony that a POSITA would have understood Figures 6–8 as showing a cavity as recited in claim 1 and the battery must be arranged within that cavity because “[o]therwise, if the battery did not fit within the ‘finger-ring,’ the ‘finger-ring’ either has (1) a battery that sticks out or is exposed to the environment or (2) a wired connection to power its components, which is contrary to the intent of having a portable, wearable device.” Ex. 1002 ¶ 166. Dr. Anthony opines that “[a] POSITA would have understood that the battery’s location within the cavity is the ‘first portion’ of the cavity because the battery necessarily occupies space in the cavity.” Id. ¶ 168. Such testimony, when viewed along with the rest of Petitioner’s showing, provides sufficient basis for institution.” slip op. at 20
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,868,178 - PTAB · Dec 3, 2024 · IPR2024-00856 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2003). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims of the ’109 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Petitioner has stipulated as follows: Petitioners stipulate that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 8,982,109 on the grounds presented in the petition in IPR2024-00856, Petitioners will not pursue an invalidity defense in district court that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Paper 13 (Updated Mandatory Notices), 1 (citing Ex. 1044). We determine that this stipulation is consistent in scope with the stipulation in Sotera Wireless cited approvingly in the Guidance Memo. Consistent with the Guidance Memo, therefore, we decline to exercise our discretion to deny institution under Fintiv in view of the parallel district court proceeding.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, a person of ordinary skill in the art “as of December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 7 (citing Karam Decl. ¶¶ 65–67). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard. The prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 13. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy. To the extent further clarification or explanation of any claim term is necessary for this Decision, we will do so in the context of our analysis of that term infra.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,109 - PTAB · Nov 26, 2024 · IPR2024-00810 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 was obvious over Rosenberg and Park.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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”).9 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
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on all of the parties’ arguments and evidence, Petitioner demonstrates a reasonable likelihood of establishing that claim 1 of the ’110 patent would have been obvious over Rosenberg and Park. Pet. 18–19, 52–73, Prelim. Resp. 6–8, 14–18. In the following sections, we discuss in detail the parties’ current disputes regarding Petitioner’s position that claim 1 would have been obvious over Rosenberg and Park.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“December 18, 2012, would have a bachelor’s degree in electrical or computer engineering, or a closely related field such as computer science, and two years of work experience with image capture and processing systems or related fields.” Pet. 8 (citing Ex. 1003 ¶ 91). Petitioner adds that “[a] person with less and/or different education, but more relevant practical experience, or vice versa, may also meet this standard” and that “[t]he prior art also evidences such level of skill.” Id. Patent Owner states that it “applies Petitioners’ proposed level of skill for purposes of this Preliminary Response and reserves the right to propose a different level of skill should the Board grant institution.” Prelim. Resp. 10. At this stage, we adopt the formulation of the level of ordinary skill in the art proposed by Petitioner and applied by Patent Owner as consistent with the prior art before us in this proceeding.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We construe only those claim terms and phrases necessary to our decision. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe 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))). At this stage of the proceeding, we need not construe any claim terms and phrases to resolve a controversy.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,982,110 - Google LLC v. Dialect, LLCInstitutedPTAB · Oct 23, 2024 · IPR2024-00753 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR of claim 12, finding a reasonable likelihood it would be unpatentable as obvious over Kennewick and Ross.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”).2” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not oppose Petitioner’s formulation of the level of ordinary skill in the art. See Prelim. Resp. generally. For purposes of this Decision, we are satisfied that Petitioner’s formulation of the level of ordinary skill in the art generally comports with the level of skill necessary to understand and implement the teachings of the ’160 patent and the asserted prior art, so we apply that formulation here.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the arguments and evidence presented, we determine no explicit construction is needed to resolve the parties’ controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“On this record, we agree with Petitioner that the similarities of Kennewick and Ross to the ’160 patent and the efficiency that would be obtained by using Ross’s technique of storing contexts of most-recently-accessed applications would have led a POSITA to combine the references. Ross expressly states that “[t]he goal is to provide multiple-application support relatively quickly,” meaning Ross’s technique seeks to be more efficient. Ex. 1005 ¶ 35. Although Patent Owner argues that Kennewick’s context scoring system is different from what Patent Owner characterizes as Ross’s “first-tomatch” system, on this record, we agree with Petitioner that Ross fits well with Kennewick’s teachings, or, as Petitioner puts it, “picks up where Kennewick leaves off.” Pet. 37 (citing Ex. 1002 ¶ 76). Specifically, Kennewick describes matching text in a transcription, such as keywords and criteria, to grammar expressions, to identify contexts for scoring. Ex. 1002 ¶ 68 (citing Ex. 1004 ¶ 144). Kennewick discloses that possible contexts are scored and the top one or few are used for further processing. Ex. 1002 ¶ 78; Ex. 1004 ¶ 152. Kennewick further teaches that a follow-on question of a dialog may inherit key words and criteria from a stack. Ex. 1002 ¶ 78; Ex. 1004 ¶¶ 144–145, 166. Ross discloses that the most-recently-accessed context in a list will be the first context evaluated when processing the next utterance. Ex. 1002 ¶ 80; Ex. 1005 ¶ 35. On this record, we do not see these teachings as conflicting or” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,640,160 - Google LLC v. Dialect, LLCInstitutedPTAB · Oct 11, 2024 · IPR2024-00750 · APJ Hyun J Jung · IPR · Institution
Instituted review of claims 1–3, 7, 8, 10, 12, 15, 17–20, 24, 25, 27, 29, 32, 34, and 36 based on obviousness over Coffman, Julia, and Cooper.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art would have possessed a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of speech- and natural language-interfaces for interacting with and directing computer systems and software, including speech recognition and processing (and more experience could substitute for less formal education, and vice versa). Pet. 15–16 (citing Ex. 1002 ¶¶ 11–15). Because Patent Owner did not file a preliminary response, the record does not yet present an alternative proposed level of ordinary skill in the art or a dispute regarding Petitioner’s proposed skill level. Therefore, based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[e]xpress claim construction is unnecessary because the prior art renders the challenged claims obvious under any reasonable construction” but “reserves its right to respond to Patent Owner’s claim construction arguments.” Pet. 17. At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether Petitioner shows a reasonable likelihood of prevailing. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“According to Petitioner, it would have been obvious to combine Coffman’s PVA and conversational system with Julia’s vehicle navigation application. Pet. 30 (citing Ex. 1002 ¶ 66). Petitioner also argues that the proposed combination would have been known prior art elements and techniques combined according to known methods to yield predictable ordinary skill in the art would have been motivated to combine Coffman and Julia because Julia provides further details about how a user provides spoken input for a navigation application and because Julia would have improved Coffman. Id. at 30–31 (citing Ex. 1002 ¶ 68; Ex. 1009, 7, 18). Also, according to Petitioner, the proposed combination of Coffman’s PVA and conversational system with Cooper’s voice-enabled email application would have been combining known prior art elements and techniques according to known methods to yield predictable results. Pet. 32 (citing Ex. 1002 ¶ 71). Petitioner argues that Cooper discloses another example of receiving a natural language utterance. Id. (citing Ex. 1002 ¶ 71). Petitioner also argues that one of ordinary skill in the art would have been motivated to combine Coffman and Cooper because Cooper provides additional details about how a user interacts with an email application using natural language utterances and Cooper would have improved Coffman. Id. at 33 (citing Ex. 1002 ¶ 73). Petitioner further argues that one of ordinary skill in the art would have had a reasonable expectation of success in combining Coffman with both Julia and Cooper because the combinations would have involved applying known technologies and techniques. Pet. 31 (citing Ex. 1002 ¶ 69), 34 (citing Ex. 1002 ¶ 74).” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,447,607
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.