- Apple Inc.InstitutedPTAB · Nov 25, 2024 · IPR2024-01399 · APJ Thu A Dang · IPR · Institution
The Board instituted review of claims 1–6, 8–15, and 17–20 on the petition’s grounds and granted Apple’s motion to join IPR2024-00782.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“As we explain above, Petitioner has shown a reasonable likelihood that it would prevail with respect to each of the claims challenged in the petition. Thus, Petitioner has shown that the Petition warrants institution.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The Petition does not present any new grounds or issues. Joinder Mot. 1, 3–5. Petitioner agrees to the schedule in the Google IPR and, thus, has shown that the trial schedule is not likely to be affected by joinder. Id. at 3, 5–6. No changes in the schedule are anticipated or necessary, and the limited participation, if at all, of Petitioner will not impact the timeline of the ongoing trial. Petitioner has agreed to an “understudy” role, which will simplify matters in the ongoing Google IPR and will be an efficient use of resources. Id. at 3, 5–6. Petitioner will assume a primary role only if Google ceases to participate in the Google IPR. Id. at 6. Accordingly, we determine that Petitioner has met its burden of showing that we should exercise our discretion to join Petitioner to the Google IPR (IPR2024-00782).” slip op. at 8
NonePatents in suitUS 8,646,042 - PTAB · Nov 22, 2024 · PGR2024-00034 · APJ Patrick R Scanlon · PGR · Institution
Instituted PGR on claims 1–19 and all asserted grounds after finding at least one claim more likely than not unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute a post-grant review. See 35 U.S.C. § 324 (2018); 37 C.F.R. § 42.4(a) (2022). To institute a post-grant review, we must determine that “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). For the reasons set forth below, we determine that the information presented shows that it is more likely than not that Petitioner would prevail in establishing unpatentability of at least one challenged claim. Accordingly, we institute a post-grant review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We note that the identification of a Ph.D. as an example of “more formal education” creates a vast range of education relative to a bachelor’s degree. Thus, we treat the identification of a Ph.D. just as it is—an example—and not a requirement. In this case, “more formal education” can be satisfied by a level of education less than a Ph.D (but greater than a bachelor’s degree). Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, definition, limited as discussed above, for the purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“would have understood Unger’s disclosure to “suggest the use of a torsion spring to facilitate attachment and detachment, because torsion springs are designed to impart this functionality.” Id. (citing Ex. 1002 ¶ 118). Petitioner also asserts that one of ordinary skill in the art would have “understood that there were a limited number of ways to impart the referenced resilient or flexible ‘manipulation,’” and “would have been motivated to look to various known solutions to impart the suggested functionality, including the torsional spring mechanism of Smith that is used in a similar hearing protection device application for a similar purpose as Unger’s mounting arms (to apply a clamping force).” Id. at 32 (citing Ex. 1002 ¶¶ 120–121).” slip op. at 17
Claim construction§ 103 obviousness§ 112 disclosurecites KSR · GrahamPatents in suitUS 11,736,855 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00784 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim across the asserted obviousness grounds.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“The plain meaning of “an integrated, secure memory storing local, secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28, 59; see also Prelim. Resp. 19–21. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 23. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:50–57. In particular, the language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” See id. (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local, secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Prelim. Resp. 23. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here.” slip op. at 8
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 4. In particular, we disagree that the District Court in the Samsung case provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.7 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claim. In any case, even if assuming arguendo that the referenced portion of the district court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to when an application, function, or service “receives information from a PDK in exchange for an access key,” as Patent Owner contends. Prelim. Resp. 8. b) Means-plus function analysis Patent Owner further contends that the term “enabling” “may further be defined by way of a means-plus-function analysis.” Prelim. Resp. 8. According to Patent Owner, “§ 112, para 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting a sufficient structure for performing that function.’” Id. (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015)). Patent Owner contends that because none of “the ‘local secured information’, ‘wireless communication interface’ [and] ‘enablement signal’ provide sufficiently definite structure,” the term 7 Even if the Court’s explanation that “[a]n application, function, or service is ‘enabled’ by a PDK when it receives information from a PDK in exchange for an access key” is an express construction, the Board is not required to adopt that construction. See Power Integrations, Inc. v. Lee, 797 F.3d 1318, 1326 (Fed. Cir. 2015) (“There is no dispute that the board is not generally bound by a prior judicial construction of a claim term.”).” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“We are unpersuaded by Patent Owner’s contentions. In particular, we are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 8. As Petitioner points out, “none of the claims of the ’960 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although this presumption is rebuttable and can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure (see Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021)), we are unpersuaded that Patent Owner has demonstrated that claim terms “wireless communication interface,” “local secured information,” and “enablement signal” fail to recite sufficiently definite structure. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’960 patent to determine whether: 1) claims 1–6, 8–11, and 14–19 are unpatentable under 35 U.S.C. § 103 as obvious over Dua and Giobbi ’157; 2) claims 1–7, 10, 11, and 14–19 are unpatentable under 35” slip op. at 49
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00783 · APJ Thu A Dang · IPR · Institution
Instituted review of claims 1–20 on five obviousness grounds: Dua and Giobbi ’157; that combination with Kotola; Buer; Buer with Giobbi ’157; and Buer with Nishikawa.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Because we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing at least one of the challenged claims is unpatentable, we institute inter partes review as to all challenged claims and grounds presented in the Petition. 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination as to the patentability of any of these challenged claims. IV. ORDER For the reasons given, it is ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is instituted as to claims 1–20 of the ’289 patent to determine whether:” slip op. at 46
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 26– 27; see also Prelim. Resp. 28. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” this portion of the Specification merely shows an exemplary embodiment and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secured information,” nothing in the Specification limits “local, secured information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.7 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The plain language of “hybrid device” does not suggest a requirement that the “hybrid device” comprises an integrated PDK. Further, nothing in the Specification clearly limits or redefines “hybrid device” to a device comprising an integrated PDK, as Patent Owner proposes. Prelim. Resp. 3– 4. Although Patent Owner contends that the District Court construed “hybrid device” as “comprising an integrated personal digital key (PDK)” (id. (citing Ex. 2001, 3)), as Patent Owner points out, the District Court’s construction was predicated on the use of “PDK” in the “hybrid device” recited in the independent claims of a family member of the ’289 patent. Prelim. Resp. 3–4. In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16 and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction of this term is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 14. As Petitioner points out, “none of the claims of the ’289 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” “enabling signal,” and “local secured information” fail to recite sufficiently definite structure. Prelim. Resp. 14–17. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. We agree with Petitioner that the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; accord Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 14
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Google LLC v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00782 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–20 based on six § 103 grounds, finding 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
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only those terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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)).” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“are unpersuaded that “enabling” may be defined by way of means-plus-function analysis. Prelim. Resp. 17. As Petitioner points out, “none of the independent claims of the ’042 patent recite the disputed limitation in ‘means-plus-function’ or ‘step-plus-function’ format.” Prelim. Reply 2. As Petitioner contends, when a disputed claim limitation does not employ “means for” language, the presumption is that each of the terms conveys sufficiently definite structure or act and, thus, is not subject to § 112 ¶ 6. Id.; see also Dyfan, 28 F.4th at 1367. Although, as Patent Owner argues, this presumption is rebuttable and can be overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure” (Prelim. Sur-reply 1 (citing Raining Computing v. Samsung Electronics America, 998 F.3d 1002, 1005 (Fed. Cir. 2021))), we are unpersuaded that Patent Owner has demonstrated that “PDK,” “RDC,” and “enabling signal,” fail to recite sufficiently definite structure. Prelim. Resp. 17–20. That is, Patent Owner has not sufficiently demonstrated that the terms could not be understood by person of ordinary skill in the art “to have a sufficiently definite meaning as the name for structure for the claimed functions.” Prelim. Sur-reply 1. According to Petitioner, the terms are “not used as ‘generic terms or black box recitations of structure or abstractions.’” Prelim. Reply 3; see Dyfan, 28 F.4th at 1368. As Petitioner points out, “when a ‘structure-connoting term . . . is coupled with a description of the ‘term’s’ operation’ § 112 ¶ 6 does not apply.” Id.; see also Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir. 2004); Dyfan, 28 F.4th at 1368).” slip op. at 12
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 13. In particular, we disagree that the District Court in the Samsung litigation provided any construction for the term “enabled.” Id. Although Patent Owner points to the District Court’s Memorandum in Support of Claim Construction Order (id. (citing Ex. 2002, 26)) to support its contention that the District Court construed the term “enabled,” this portion of the District Court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26.8 That is, a determination of whether a term is indefinite is not the same thing as construing a claim term. Thus, the District Court’s determination that “hybrid device” is not indefinite did not constitute a construction of that term, much less provide a construction of “enabled” recited elsewhere in the claims. In any case, even if assuming arguendo that the referenced portion of the District Court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” as being limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 28.” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00775 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that claims 1, 2, 4–9, 11, 12, and 14–17 are obvious over Burger and claims 3, 10, and 13 over Burger and Robinson.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION Petitioner has shown a reasonable likelihood that it would prevail with respect to at least 1 of the claims challenged in the Petition.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in wireless communications security,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Pet. 3–4 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“In IPR2024-00232, we made clear that “exclud[ing] any active participant in a transaction” from the construction of third-party trusted authority would exclude preferred embodiments of the ’730 patent and, therefore, is presumptively incorrect. IPR2024-00232, Paper 10 at 11–12 (citing Ex. 1001, 5:42–46, 6:32–64, 7:10–22, Figs. 3–5, 7; Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023)). We also explained that “active participation alone does not make an entity a party to the transaction.” Id. at 22–23. Instead, we evaluate a party’s relationship to the transaction to determine whether it is a principal party to the transaction or a third-party. Id. at 11 (“The ‘witness’ role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in.”), 22 (“We agree with Petitioner that, in this example, the TPCH is separate from, and thus a third party to, the principal parties to the transaction (the user and the vendor) and also a third party to the financial institution that pays the vendor.”). To be clear, below, we evaluate Petitioner’s showing as to obviousness over Burger based on the ordinary meaning of third-party trusted authority, namely, “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“2. Remaining claim terms (including “access message”) Patent Owner acknowledges that “the plain and ordinary meaning of ‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of “access message,” it is not necessary, at this stage of the proceeding, to further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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)).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,352,730 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Nov 18, 2024 · IPR2024-00846 · APJ David C Mckone · IPR · Institution
The Board instituted review of claims 1–29, finding a reasonable likelihood that claims 1, 2, 4, 5, 7–13, 15, 16, 18–24, and 26–29 are obvious over Burger.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of the ’954 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“‘access message’ is a message enabling entry to, communication with, or use of an object,” but argues that, “to capture all the disclosed embodiments,” we should construe “access message” to mean “a signal or notification enabling or announcing access,” allegedly consistent with a district court construction. Prelim. Resp. 2–7. As Petitioner has shown a reasonable likelihood of success under the arguably narrower ordinary meaning of further construe this term. Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we 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)).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner contends that “it would have been obvious to a [person of ordinary skill in the art] to incorporate the age verification method of Robinson in Burger so that Burger’s system can be used by businesses interested in conducting transactions that require age-verification.” Pet. 93. Petitioner argues that it would have been predictable to include Robinson’s age-verification feature in Burger’s system in light of Robinson’s explanation that merchants and their employees face penalties if they sell age-restricted goods (e.g., alcohol or tobacco) to underage individuals. Id. at 94–95 (citing Ex. 1006 ¶ 5; Ex. 1003 ¶¶ 79–80). Dr. Traynor testifies that there would have been “a reasonable expectation of success because it merely involves combining known elements in a manner that would have been easily implemented and obvious to” a skilled artisan. Ex. 1003 ¶ 80. At this stage of the proceeding, we credit Dr. Traynor’s uncontroverted testimony. As to claims 3, 14, and 17, Petitioner points to Robinson’s description of a user registering a biometric sample, identity-verifying information (SID), and age-verifying information with a database of an age-verification system. Pet. 95–96 (citing Ex. 1006 ¶¶ 14–15, 28, 43, 48; Ex. 1003 ¶¶ 175– 178). Petitioner argues that, in the combination of Burger and Robinson, Robinson’s age-verifying information would be stored in the database of Burger’s network server 114. Id. at 95 (citing Ex. 1003 ¶ 176). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. Prelim. Resp. 26. On the current record, Petitioner has shown sufficiently that Robinson teaches the additional limitations of claims 3, 14, and 17, and that a skilled Burger and Robinson.” slip op. at 29
- Expert testimonyPetitioner expert creditedOther
“Petitioner contends that Burger’s pocket vault 102 is “an integrated device.” Id. at 23 (citing Ex. 1005 ¶¶ 94–95, 118, 134, Fig. 2; Ex. 1003 ¶ 90). Petitioner argues that write-once memory 212, a storage element that is not capable of being subsequently altered, persistently stores biometric data of the user, and that other hard-wired memory stores a pocket vault ID and encryption/decryption information. Id. at 24–27 (citing Ex. 1005 ¶¶ 112, 114, 118, 127, 129, 154, 182, 551–552, Fig. 2; Ex. 1003 ¶¶ 22–23, 91–96). Dr. Traynor testifies that it would have been obvious to implement the hardwired memory as protected, write-once memory so that sensitive information that is not subject to change (e.g., device ID, encryption information) is kept secure and not tampered with. Ex. 1003 ¶ 98. We credit this testimony at this stage of the proceeding.” slip op. at 18
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,886,954 - PTAB · Nov 14, 2024 · PGR2024-00026 · APJ Hyun J Jung · PGR · Institution
Instituted PGR on claims 1–7 and all grounds because Petitioner showed it was more likely than not that at least one challenged claim lacks written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s arguments, cited portions of the Specification, and supporting testimonial evidence demonstrate that it is more likely than not that claims 1–7 are unpatentable.” slip op. at 20
- Disclosure Requirements (§112) › Written description (Ariad)Written description inadequateDecided for petitioner
“patent describes that “angular position transducer 78 is placed on top of swing leg pivot shaft 24” and that “pivot shaft 24 is rotationally fixed to the connector plate and duplicates the angular movements of swing leg 20 about the pivot shaft.” Ex. 1001, 12:15–16, 12:20–22, Figs. 5, 7. The ’723 patent also describes that “[a]ngular position transducer 78 is mounted inside . . . protective can 90 . . . which is bolted to hinge bracket 28 via an upright holding arm 92” and that “trigger pin 94 projects upwardly from the top surface of pivot shaft 24 and cooperates with angular position transducer 78 to generate an angular position signal.” Id. at 12:28–33, Fig. 5. These descriptions expressly convey that angular position transducer 78 is on pivot shaft 24 and mounted inside protective can 90 that is bolted to hinge bracket 28. Id. at 12:15–16, 12:20–22, 12:28–30, Figs. 5, 7; see also Prelim. Resp. 17 (describing the same embodiment shown in Figs. 5 and 7). According to Petitioner, the ’723 patent describes the pivot shaft as part of the hinge bracket, not the modular frame or swing leg. Pet. 109–110 (citing Ex. 1001, 7:42–46, 12:17–22). On the preliminary record, we agree because the cited portions of the Specification describe that a “hinge bracket is interposed between each swing leg and an associated surface of the bolsters and includes a fixed, upright pivot shaft that pivotally engages the swing leg for pivotal movements” and “pivot shaft 24 is rotationally fixed to the connector plate.” Ex. 1001, 7:42–45, 12:20–21. We also agree that “even if one were to find that the hinge bracket is part of either the modular frame or swing leg (contrary to the claims and specification treating these all as separate components), the specification would only provide written description for one of the claimed alternatives.” Pet. 110 (citing Ex. 1002 ¶ 199).” slip op. at 19
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this preliminary stage, we determine that express claim interpretation is not necessary to determine whether it is more likely than not that at least one of the claims challenged in the petition is unpatentable. 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 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We will also not use our discretion under § 325(d) to deny the Petition based on arguments previously presented in IPR2021-00135, because Petitioner relies on a Board determination regarding claim 8 from IPR2021- 00136, not arguments previously made for claim 1 in IPR2021-00135. Pet. 111–115, 119; Prelim. Resp. 8–9; Prelim. Sur-reply 5. Furthermore, we determined the effective filing date of claim 8 of the ’571 patent without deciding, that other challenged claims, such as claim 1, were entitled to their earliest possible effective filing date. See Godberson-Smith, Paper 61 at 11, 12.” slip op. at 12
Claim construction§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,772,723 - PTAB · Nov 14, 2024 · IPR2024-00835 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR of claims 1–8 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable over CIII and Rio.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Advanced Bionics stated that: If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. That is, although Becton, Dickinson factor (c) evaluates “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection,” the focus should be on the record when determining whether the Office erred in evaluating such art or arguments.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the preliminary record, Petitioner shows a reasonable likelihood of prevailing in its challenge that CIII and Rio teach, suggest, or would have been understood to disclose the limitations of claim 1 and that one of ordinary skill in the art would have combined the references in the manner asserted with a reasonable expectation of success.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“track” that “is configured to rotate . . . relative to the jacking column,” Petitioner proposes modifying CIII in view of Rio “by positioning Rio’s rotary actuator 44 between the jacking column and crawler track, and using that rotary actuator to rotate CIII’s crawler track relative to the entire jacking column, rather than just its outer cylinder.” Pet. 45 (citing Ex. 1002 ¶ 89) (emphasis added); see also id. at 47 (citing Ex. 1002 ¶ 92; Ex. 1006, 5:8–11, 6:2–6). Petitioner argues such a modification would have been a design choice, one of a finite number of alternatives, obvious to try, and a known design that provides maneuverability. Id. at 29–31 (citing Ex. 1002 ¶¶ 61–67; Ex. 1006, 5:8–11; Ex. 1007, 5:14–59, Figs. 4–5; Ex. 1008, 7:35– 53, Figs. 7, 20; Ex. 1009 ¶¶ 5, 19–20, Fig. 2; Ex. 1011, 4:7–16, Fig. 3; Ex. 1013 ¶¶ 41, 44–45). At this stage, Petitioner’s arguments and cited evidence sufficiently support for institution that the modification would have been made so that the proposed combination would have had “a crawler track” that “is configured to rotate . . . relative to the jacking column.” Regarding claim 1’s “slew drive,” as discussed above, Petitioner proposes modifying CIII so that rotary actuator 44, the asserted slew drive, would be between the jacking column and crawler track. See Pet. 29–31. Petitioner also argues that, in the proposed combination, “actuating the rotary actuator causes the crawler track to rotate relative to the entire jacking column.” Id. at 47 (citing Ex. 1002 ¶ 92). The present record supports Petitioner’s argument that Rio’s worm gear actuator would have been understood to disclose a slew drive with support from the ’318 patent itself, the opinion of its declarant, and deposition testimony of Patent Owner’s expert in related litigation. Id. at 46–47 (citing Ex. 1001, 11:40–61; Ex. 1002 ¶ 91; Ex. 1006, 4:61–5:3; Ex. 1032, 84:12–86:17). At this stage, the cited evidence sufficiently supports for purposes of institution Petitioner’s argument that the proposed combination would have included the recited “slew drive.”” slip op. at 28
- Skill levelSkill level petitioner adoptedOther
“had at least a four-year degree in mechanical engineering or a closely related field and at least two years of experience designing, developing, or operating heavy machinery, including their components and control systems.” Pet. 8– 9 (citing Ex. 1002 ¶¶ 22–24). Petitioner also argues that “[a]dditional experience could substitute for a formal degree, and an advanced degree could substitute for experience.” Id. at 9 (citing Ex. 1002 ¶¶ 22–25). Petitioner states that “[t]he Board adopted this definition of the level of ordinary skill for the related ’749 patent.” Id. (citing Godberson-Smith Const. Co. v. Guntert & Zimmerman Const. Div., Inc., IPR2020-01698, Paper 80, 21–24 (PTAB Apr. 12, 2022) (Final Written Decision)). For purposes of its Preliminary Response, Patent Owner applies Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 13 (quoting Pet. 8–9). 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. Pet. 8–9; Godberson-Smith, Paper 80 at 21–24 (determining level of ordinary skill after considering the parties’ competing proposals and evidence).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,535,318 - PTAB · Oct 10, 2024 · IPR2024-00734 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 3, 15, 17, and 19–21, finding a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 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). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 3, 15, 17, and 19–21 in the ’518 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have been someone”: (1) “knowledgeable with the computer networking techniques available at the time”; and (2) “who had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with computer networks, including network security.” Pet. 7. Petitioner also asserts that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Crovella’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 15–16. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’518 patent as well as the asserted references. See Ex. 1003 ¶ 16.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, Petitioner establishes sufficiently for purposes of institution that an ordinarily skilled artisan would have had reasons, i.e., as articulated by Dr. Crovella, to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes. See Pet. 14–21, 27, 29–31, 38; Ex. 1003 ¶¶ 51–58, 62–72, 91–92, 98, 101, 121. Based on the current record, Petitioner also establishes sufficiently that an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of the references. See Pet. 16–17, 22, 38; Ex. 1003 ¶¶ 59–60, 73–74, 121. (f) Preliminary Conclusion About Alleged Obviousness As discussed above, Petitioner’s analysis addresses how the combined disclosures in Gai, Yip, and Kwan teach claim 1’s subject matter. See supra §§ III.D.4(a)–(d). Additionally, Petitioner provides reasons with rational underpinnings as to why an ordinarily skilled artisan would have been motivated to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.D.4(e). Hence, Petitioner demonstrates a reasonable likelihood of proving that claim 1 is unpatentable under § 103(a) because the claim would have been obvious over Gai, Yip, and Kwan.” slip op. at 34
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,623,518
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.