- PTAB · Apr 13, 2023 · IPR2022-01577 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–10 on all petitioned grounds, finding a reasonable likelihood that claim 1 was anticipated by the HDI 3000 Manual.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 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 provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’157 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, biomedical engineering, or a related discipline, along with relevant experience (at least 2–3 years for a Ph.D., 3–5 years for a Master’s, and 5+ years for a Bachelor’s) researching or developing ultrasound systems or other medical imaging devices. EX1008, ¶¶21–26. The POSA would have general knowledge of ultrasound systems and related technologies as of January 15, 2001. Id. Pet. 7–8. Patent Owner applies Petitioner’s definition for purposes of its Preliminary Response. Prelim. Resp. 5. We adopt the parties’ accepted definition for purposes of this Decision.” slip op. at 6
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“In this case, Patent Owner’s assertion that its proposed construction is “consistent with the specification” fails to articulate or apply the proper standard. For example, any interpretation whose scope is equal to or narrower than a proper construction would logically be consistent with that proper construction. Thus, Patent Owner could only establish that its proposed interpretation is equal to or narrower in scope than the proper interpretation. Comparing the claims to prior art using a claim construction potentially narrower than what is claimed would not be a fruitful exercise because the claim could read on the prior art but not on the unduly narrow interpretation. Cf. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001) (holding that a broad claim is anticipated by any narrow disclosure falling within the broad claim). Patent Owner’s assertion that its proposed construction is consistent with examples in the specification is also not persuasive, and no more persuasive than its prior implication that its proposed construction is not inconsistent with the specification. i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.” (internal quotation omitted)). Similar to the situation in i4i, Patent Owner here has failed to explain how the claim is clearly limited to the examples in the specification. Instead, we construe “information of object” to be an identification of the object to be studied in the ultrasound examination, based on its plain language in the context of the claimed ultrasound device. We are not apprised of any language, on this record, in the ’157 patent or prosecution history that otherwise constrains what types of “object” would be inspected by the claimed device. For example, there is no indication that the machine is less capable than other ultrasound machines in a way that limits its use to examinations of certain things in a body such as a liver or a heart, but not simpler things in a body such as blood vessels or more complex things such as a fetus. Accordingly, we see no reason to constrain “object” to something other than those things in a body that a person of ordinary skill in the art would investigate during an ultrasound examination.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“It does not appear necessary at this time to specifically construe any other claim terms. 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
Claim construction§ 102 anticipationcites Phillips · KSRPatents in suitUS 6,901,157 - PTAB · Apr 13, 2023 · IPR2022-01576 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–3 on all petitioned grounds, finding a reasonable likelihood that claim 1 is unpatentable over Petruzzelli.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 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 provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’985 patent is unpatentable, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. 37 C.F.R. § 42.08(a).” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a degree in electrical engineering, computer science, or a related discipline, along with relevant experience (at least 1– 2 years for a Ph.D., 2–3 years for a Master’s, and 3+ years for a Bachelor’s) researching or developing graphical user interfaces (GUIs) for ultrasound systems or other medical imaging devices. EX1007, ¶¶14–19. The person would have general knowledge of GUIs for ultrasound systems or other medical imaging devices as of April 18, 2014. Id.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Petitioner asserts that no claim terms require construction at this stage. Pet. 15. Patent Owner does not offer any claim constructions, but does challenge Petitioner’s choice not to offer any claim constructions, and suggests that we should deny the Petition on that basis. Prelim. Resp. 75– 77. We find Patent Owner’s arguments unavailing. First, we note that the parties have not offered competing claim constructions, such that there is no specific claim construction issue between the parties at this time. Second, we note that we consider Petitioner’s interpretation of the claims sufficiently clear based on their application of the claims on the art. Thus, we are able to proceed without explicitly construing any claim terms, and we are not persuaded to deny on that basis. In view of the above, we do not construe any claim terms. 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 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To establish anticipation, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 9,538,985 - PTAB · Apr 13, 2023 · IPR2022-01575 · APJ Frances L Ippolito · IPR · Institution
The Board instituted IPR on claims 1–6, 12, 13, and 15 on all petition grounds, finding a reasonable likelihood that claim 1 is anticipated and/or obvious over Halmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented in the parties’ briefs, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least 1 of the claims 1–6, 12, 13, and 15 of the ’168 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we hereby institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe any terms require construction at this stage.” Pet. 10. At this stage of the proceeding, Patent Owner has not yet filed a response. For purposes of this decision, we do not expressly construe any terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017)), cert. denied, 138 S. Ct. 1695 (April 30, 2018) (noting that “we need only construe terms ‘that are in controversy, 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)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We have reviewed Petitioner’s evidence and argument, and find that Petitioner has sufficiently shown that Halmann discloses this limitation of claim 1 for the purposes of institution.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,867,168 - Ericsson, Inc. v. Dali Wireless, IncInstitutedPTAB · Mar 9, 2023 · IPR2022-01419 · APJ Sharon Fenick · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“other information defining or describing the way data is being transmitted by a wireless access point because Petitioner only maps “radio resources” to analog downlink RF carriers. Pet. 37–40. Thus, whether “radio resources” encompass other information defining or describing the way data is being transmitted by a wireless access point is not at issue here. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Analysis Petitioner argues that Sabat-552 teaches a baseband unit communicatively coupled to another baseband unit, or receiving radio resources from another baseband unit, as claimed in claims 6, 12, and 17, or the indirect connection to yet another baseband unit, as claimed in claim 7. Pet. 52–56 (citing Ex. 1008, 6:55–61, Fig. 1; Ex. 1012 ¶¶ 107, 109, 110, 113). Petitioner argues that the combination would be motivated by Sabat- 552’s teaching of easily sharing the system among service providers to reduce costs, and that one of ordinary skill in the art would have expected success. Id. at 54–55 (citing Ex. 1008, 2:48–58, 3:65–4:5; Ex. 1012 ¶ 110).” slip op. at 25
- PTAB / AIA Trials › §315(e) estoppelNot reached
“Patent Owner responds that “it is well settled law . . . that 37 C.F.R. § 42.73(d)(3) does not apply to a patent owner defending the validity of issued claims in IPR proceedings because the patent owner is not ‘obtaining’ a patent in this post-issuance proceeding as required by the language of § 42.73(d)(3).” Prelim. Resp. 2–3. Patent Owner also asserts that “the claims of the ’499 patent are also materially different from the claims of the ’178 patent such that Patent Owner is not taking any positions inconsistent with the prior IPR proceeding.” Id. at 3, 17–20. of institution as discussed above, we do not reach alleged estoppel under 37 C.F.R. § 42.73(d)(3).” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - PTAB · Mar 9, 2023 · IPR2022-01293 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on claims 1–19 and all petition grounds, finding a reasonable likelihood of unpatentability based on Wu grounds and compelling merits despite Fintiv factors favoring denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“f) Conclusion – Initial Fintiv Analysis We have considered the circumstances and facts before us in view of the first five Fintiv factors. Because our analysis is fact driven, no single factor is determinative of our conclusion. Considering these five Fintiv factors, we determine that they favor a discretionary denial. 2. Assessment of the Compelling Merits As we have found that the first five Fintiv factors favor discretionary denial, we proceed to assess whether the record shows that Petitioner has presented a compelling unpatentability challenge.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [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.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. As discussed below, we have considered our whether to exercise our discretion to deny pursuant to 35 U.S.C. § 314(a) and determined not to exercise this discretion. Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s definition appears generally consistent with Petitioner’s definition, with the exception of requiring 3 years or more (as systems. For the purpose of institution, we adopt Petitioner’s provided definition for the level of skill of a person of ordinary skill in the art as reasonable and consistent with the prior art, which does not encompass an open-ended (“at least 3 years”) amount of experience, and which is supported by the testimony of Dr. Acampora. We would reach the same conclusions if we were to remove the open-ended terminology from Patent Owner’s definition and adopt that.” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Thus, the record does not support Patent Owner’s proposed construction of “radio resources,” that requires the RF carriers, CDMA codes, TDMA time slots or other information defining and describing the way data is being transmitted cannot include the user payload data that is transmitted. 4. Our Partial Construction For our present purposes, we do not need to completely construe the term “radio resources.” Nidec Motor Corp., 868 F.3d at 1017. However, a partial construction is required, and for the reasons discussed above, for this Decision, we construe “radio resources” to encompass RF carriers, CDMA codes, and TDMA time slots, including those in which underlying data is transmitted.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,334,499 - PTAB · Feb 6, 2023 · IPR2022-01318 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 5, 6, and 8 based on a reasonable likelihood of unpatentability over Duan, and Duan with Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“involved two petitioners accused of infringement based on the same product—made by one petitioner and incorporating technology licensed from the other. Valve I, at 9–10 (finding a significant relationship between the two petitioners “with respect to Patent Owner’s assertion” of the challenged patent); Valve II, at 10 (same); see Prelim. Reply 3. Patent Owner has asserted no such relationship here, and we conclude that Patent Owner has failed to establish that Petitioner has a significant relationship with the -522 IPR petitioner. Representation by the same counsel and being accused of infringing the same patent does not create a relationship that justifies discretionarily denying institution. Accordingly, Factor 1 weighs strongly against denying institution.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have had a Bachelor of Science (B.S.) in electrical or mechanical engineering, or similar advanced post-graduate education in this area, or would have possessed at least 2-3 years of experience in liquid cooling systems for computer systems or similar systems. A POSITA would be knowledgeable of the concepts, components, and their functions described as “prior art” in the ’355 patent such as, e.g., pumps, radiators, fans, reservoirs, and other techniques of heat dissipation and liquid cooling. (Ex-1001,1:11-47.) In addition, a POSITA would be knowledgeable about electric motors and their components (e.g., electromagnetic coils, rotors, stators, AC/DC motors, etc.) Pet. 6–7 (citing Ex. 1003 ¶¶ 13–18). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that no claim term requires express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 14
Claim constructionDiscretionary denialPatents in suitUS 10,078,355 - Ericsson Inc. v. Dali Wireless Inc.InstitutedPTAB · Feb 1, 2023 · IPR2022-01212 · APJ Karl D Easthom · IPR · Institution
Instituted IPR on claims 1–12 because Ericsson showed a reasonable likelihood that claims would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “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, the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–12 of the ’338 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites /default/files/documents/interim_proc_discretionary_denials_aia_parallel_di strict_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains 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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). The Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. Petitioner “adopts the identical stipulation from Sotera, namely, that if the IPR is instituted, . . . Petitioner will not pursue in the District Court Litigation any ground raised or that could have been reasonably raised in an IPR for the challenged patent.” Pet. 81.” slip op. at 55
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Determining the level of ordinary skill in the art involves various factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Patent Owner as it is consistent with the ’338 patent and the asserted prior art. Even if we were to adopt Petitioner’s similar assessment, it would not alter our decision to institute.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Turning to the claim language, limitation vii recites “reconfiguring each remote radio unit by: determining a load percentage for each remote radio unit.” Claim 1 simply does not specify how to determine the load percentage for each remote radio unit and “load percentage” is a broad term. Stated differently, claim 1 does not specify the numerator or denominator to be used in determining the load percentage, but the parties agree that the numerator is the amount of load used in an RRU, as indicated above. On this preliminary record, Petitioner’s interpretation of “available capacity” as including “a single radio, a group of radios or the entire DAS system, [able to] be determined using throughput, number of connections, number of users, number of carriers, or power,” is sufficient for purposes of institution. See Pet. Reply 3 (citing Ex. 1005, 4:24–27; 5:13–15; 6:1–4; Ex. 1003 ¶¶ 104–06). On this preliminary record, as Petitioner argues (Pet. Reply 2) and contrary to Patent Owner’s construction, the claim language and the specification do not support limiting available capacity to a single RRU, or similarly, limiting the scope of “load percentage” to a load consumed by a remote radio unit divided by the assigned available capacity for that remote radio unit.6” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,682,338 - PTAB · Dec 28, 2021 · IPR2021-01195 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 6, 7, 11, and 12, finding a reasonable likelihood that the Batchelder-based obviousness grounds would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityNot reached
“Under the Board’s precedential decision in SharkNinja Operating LLC v. iRobot Corp., when no time-bar or estoppel would apply once determining Petitioner did not name all RPIs, the Board need not address the issue. IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential); see also Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB Mar. 4, 2016) (precedential) (“[O]ur jurisdiction to consider a petition does not require a ‘correct’ identification of all RPIs in a petition.”); Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the ’354 patent, the overlap in the asserted prior art, and our prior determination of unpatentability regarding the ’354 patent, we conclude that the merits of Petitioner’s case in this proceeding are substantively strong. Thus, this factor weighs strongly in favor of institution. 7. Holistic assessment of factors and conclusion We consider the above factors and take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In weighing the totality of the evidence, we decide not to exercise discretion under § 314(a) to deny institution.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill would have been knowledgeable regarding liquid cooling systems for computer systems, would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in electrical or mechanical engineering or a closely related field, and would have possessed at least two or three years of experience in liquid cooling systems for computer systems or in similar systems. Pet. 7–8 (citing Ex. 1003 ¶¶ 23–26). Patent Owner does not dispute this definition of a person of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and in the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“construe claim terms “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). The parties stipulated to constructions of “reservoir” and “chamber” in the district-court litigation. Ex. 1005, 2. Petitioner proposes additional constructions for “impeller” and “radiator.” Pet. 8–10. Patent Owner does not dispute those constructions. See generally Prelim. Resp. Based on our analysis of the issues in dispute at this stage of the proceeding, we conclude that none of the claim terms identified by the parties require express construction at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 15
Claim constructionDiscretionary denialPatents in suitUS 10,613,601 - Securus Technologies, Inc. v. Global Tel*link CorporationInstitution deniedPTAB · Oct 11, 2017 · IPR2017-01177 · APJ Kevin F Turner · IPR · Institution
Instituted review of claims 1–20: claims 1–6 and 8–15 on obviousness over Otto, and claims 7 and 16–20 on obviousness over Otto, Gainsboro, and San Martin.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, we conclude that there is a reasonable likelihood that Petitioner would prevail in showing that claims 1–20 of the ’250 Patent are unpatentable. The Board has not made a final determination with respect to the patentability of these claims. The Board’s final determination will be based on the record as developed fully during trial.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As quoted by Patent Owner, 35 U.S.C. § 325(d) addresses whether “the same or substantially the same prior art or arguments previously were presented to the Office.” To evaluate this criterion, we examine what arguments and art were presented to and considered by the Examiner during prosecution. Although Otto was considered by the Examiner (Ex. 1004, 243 indicates Otto was included in an Information Disclosure Statement by the Applicant), the Examiner did not rely on Otto in any rejection of the issued claims in view of Otto. We are further persuaded that the Examiner has not been shown to have considered Otto in the instant context, i.e., with claims 10 being argued as being obvious over Otto and with declaration testimony opining that the claims would have been obvious over Otto (Ex. 1002). Patent Owner also faults Petitioner for not distinguishing Otto from San Martin (Prelim. Resp. 7), but it is not necessarily incumbent on a petitioner to distinguish the disclosures of newly applied and previously applied prior art references. Patent Owner points out similarities in the disclosures of Otto and San Martin (id. at 6–7), but does not demonstrate what similar portions of Otto and San Martin would have been considered in finding certain claims allowable. See Ex. 1004, 219. Such a consideration is important because Patent Owner incorporated the allowable subject matter into the independent claims to gain allowance. See Ex. 1004, 290. At this stage of the proceedings, we are persuaded that that there is a reasonable likelihood that Petitioner would prevail in showing the subject matter of the independent claims are taught or suggested by Otto, and as discussed below, we are not persuaded that the disclosures of Otto and San Martin are necessarily cumulative.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“With respect to the level of ordinary skill in the art, Petitioner asserts that such a person “would have held at least a bachelor’s degree in electrical engineering, computer engineering, or a similar field, and had at least two years of experience (or the academic equivalent) working with speaker-dependent voice recognition in the context of telecommunications.” Pet. 7 (citing Ex. 1002 ¶¶ 38–41). Patent Owner does not offer an alternate characterization at this time. As such, we adopt Petitioner’s statement of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Hence, we determine that “match” would have been understood as determining whether two data items are identical or finding a data item that is identical to a key. See Ex. 3001. Furthermore, we determine that “substantially” would have been understood as to a great or significant extent, or for the most part or essentially. See Ex. 3002. Therefore, we determine that the broadest reasonable construction, consistent with and in 7 the context of the specification, of “substantially matches” is “determining whether two data items are for the most part or essentially identical.” See also Verve v. Crane Cams, 311 F.3d 1116, 1120 (Fed. Cir. 2002) (“Expressions such as “substantially” are used in patent documents when warranted by the nature of the invention, in order to accommodate the minor variations that may be appropriate to secure the invention.”)); see, e.g., Ecolab Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001) (explaining that “like the term ‘about,’ the term ‘substantially’ is a descriptive term commonly used in patent claims to avoid a strict numerical boundary to the specified parameter”) (citation omitted). Although Petitioner does not proffer an explicit construction for the claim term “substantially matches,” Petitioner does argue that the prior art discloses “both exact matches and matches that deviate from exact matches by predetermined amounts.” Pet. 29 (citing Ex. 1002 ¶ 74). Therefore, we are persuaded that Petitioner is implicitly applying a claim construction of “substantially matches” that comports with the broadest reasonable construction determined herein.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites NautilusPatents in suitUS 9,521,250 - Apple Inc. v. Voip-Pal.Com Inc.Rehearing deniedPTAB · Jan 3, 2017 · IPR2016-01201 · APJ Stacy B Margolies · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving institution in place for claims 1, 7, 27, 28, 34, 54, 72–74, 92, 93, and 111.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD OF REVIEW The party challenging a decision in a request for rehearing bears the burden of showing the decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed.” Id. Upon a request for rehearing, the decision on a petition will be reviewed for an abuse of discretion. 37 C.F.R. § 42.71(c).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“argument that the purported motivation to combine—that allowing users to place calls as if they were dialing from a standard PSTN phone would be desirable—is unsupported by substantial evidence. Reh’g Req. 7–12. Specifically, Patent Owner argues that the Institution Decision relies on testimony from Petitioner’s declarant, Dr. Houh, and that that declaration testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent Owner also argues that the Board overlooked Patent Owner’s argument that Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.” slip op. at 5
- Expert testimonyPetitioner expert creditedDecided for petitioner
“argument that the purported motivation to combine—that allowing users to place calls as if they were dialing from a standard PSTN phone would be desirable—is unsupported by substantial evidence. Reh’g Req. 7–12. Specifically, Patent Owner argues that the Institution Decision relies on testimony from Petitioner’s declarant, Dr. Houh, and that that declaration testimony “do[es] not rely upon any evidence for support.” Id. at 10. Patent Owner also argues that the Board overlooked Patent Owner’s argument that Dr. Houh’s testimony should be entitled to little or no weight. Id. at 11–12.” slip op. at 5
§ 103 obviousnessPatents in suitUS 8,542,815
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.