- Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01172 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 1–9, 11–24, 26, 28, 29, and 31–34 on all asserted grounds because Petitioner showed a reasonable likelihood that at least one claim is anticipated by Grotmol.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that the projected trial date (at least five months after the projected statutory deadline for a final written decision), the parties’ minimal investment in the District Court Litigation, and Petitioner’s stipulation all weigh against (or at least slightly against) discretionary denial of institution. As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“likelihood of prevailing in showing that claims 1–9, 11–24, 26, 28, 29, and 31–34 are anticipated by Grotmol. III. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Accordingly, we institute an inter partes review on all grounds of unpatentability in the Petition. At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. IV. ORDER It is hereby ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–9, 11–24, 26, 28, 29, and 31–34 of the ’583 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art According to Petitioner, [a] person having ordinary skill in the art . . . relevant to the ’583 patent as of November 26, 2017—the earliest possible priority date of the ’583 patent—would have had at least: (1) a bachelor’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with two to three years of work experience in computer vision, image/video processing, and/or machine learning; or (2) a master’s degree in electrical engineering, computer engineering, computer science, systems engineering, or equivalent course work with a focus in computer vision, image/video processing, and/or machine learning. Pet. 3–4 (citing Ex. 1003 ¶ 41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Jason Janet. Ex. 1003 ¶ 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 4. We adopt Petitioner’s description for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the corresponding structure for the “means for receiving or generating a first one or more digital pictures,” the “means for receiving or generating a first one or more instruction sets for operating the first device,” and the “means for learning the first one or more digital pictures correlated with the first one or more instruction sets for operating the first device” in claim 34 is “one or more processor circuits.” Pet. 4. Patent Owner does not dispute Petitioner’s proposed construction at this stage of the proceeding. Prelim. Resp. 6. As a result, for purposes of this Decision, we need not determine whether Petitioner identifies sufficient corresponding structure for the above limitations. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 12
Claim construction§ 102 anticipationDiscretionary denialPatents in suitUS 11,055,583 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Jan 8, 2024 · IPR2023-01169 · APJ Barbara A Parvis · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Tesla would show at least claim 1 unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“requested in the parallel district court litigation. Also, based on the current schedule in the parallel district court proceeding, significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 12, 2024. See generally Ex. 2005. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’134 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 15
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“and second one or more object representations “represent one or more objects of the application.” Ex. 1001, 171:51–53, 171:55–57. We discern nothing in claim 1 that supports Patent Owner’s proposed construction.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,607,134 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01054 · APJ Russell E Cass · IPR · Institution
The Board instituted review of claims 4–5, 7, 11, and 14–15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Considering the subject matter of the ’974 patent, the background technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for the person of ordinary skill in the art, except we decline to adopt “at least,” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected in the specification of the ’974 patent and the asserted prior art references. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Accordingly, for purposes of this Decision, and based on the current record, except as noted above, we adopt Petitioner’s assessment of the level of skill for one of ordinary skill in the art.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for generating or receiving,” “means for anticipating,” and “means for executing” in disclaimed claim 19. Pet. 4–5. Patent Owner argues that “construction of these terms is unnecessary” due to the disclaimer of claim 19. Prelim. Resp. 14. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (alteration in original)).” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“properties of one or more objects.” Id. We, therefore, preliminarily find that the language of claim 18 supports Petitioner’s position.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,452,974 - Tesla, Inc. v. Autonomous Devices, LLCInstitutedPTAB · Dec 13, 2023 · IPR2023-01055 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 3–18 on all asserted grounds, finding a reasonable likelihood that Tesla would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDecided for petitioner
“proceeding significant investment remains including that claim construction briefing does not begin until April 26, 2024 and the hearing on claim construction is not scheduled until July 26, 2024. See generally Ex. 2006. We, therefore, do not agree that the evidence supports Patent Owner’s argument that the parallel district court proceeding is in an advanced stage such that a stay, if requested, would not be granted. We will not attempt to predict how the district court in the parallel district court proceeding would proceed if a stay is requested because the court may determine whether or not to stay any individual case, including the related one, based on a variety of circumstances and facts beyond our control and to which the Board is not privy. Sand Revolution II, LLC v. Cont’l Intermodal Grp. - Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16, 2020) (informative) (“Sand Revolution”). Accordingly, we find that factor 1 is neutral.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“this early stage, we determine that Petitioner has shown sufficiently, for purposes of institution, that Grotmol discloses each recitation of claim 3. We preliminarily find that Patent Owner’s arguments do not undermine Petitioner’s showing. Accordingly, we conclude that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 3 is anticipated by Grotmol.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4 (citing Ex. 1002 ¶¶ 40–42). At this stage in the proceeding, Patent Owner adopts Petitioner’s proposal. See Prelim. Resp. 5.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner provides a construction for “means for processing” recited in disclaimed claim 20. Pet. 5. Patent Owner argues that “construction of this term is unnecessary.” Prelim. Resp. 14. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,238,344 - PTAB · Nov 27, 2023 · IPR2023-00902 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–17 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Further, when instituting an inter partes review, we “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. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had “a degree in electrical engineering, computer science, or a similar discipline, with at least 2–4 years of relevant industry or research experience in the network security industry,” as well as “familiarity with the wireless standards and protocols relating to mobile communications and the security of such communications.” Pet. 11–12 (citing Ex. 1003 ¶¶ 65, 66, 68). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Angelos Keromytis. Ex. 1003 ¶¶ 63–68. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose an express construction for any claim terms. Pet. 15. Patent Owner proposes construing the term “validity period” such that it “cannot be a single point in time.” Prelim. Resp. 10. Patent Owner also proposes construing the phrase “if the initiation key is deemed valid, generating a session key,” to mean that generating a session key “must be premised upon the initiation key having had its validity verified ‘based on a current time.’” Id. at 12. As discussed below, on this record, Petitioner shows sufficiently that the asserted prior art teaches the disputed limitations of the challenged claims even under Patent Owner’s proposed constructions. See Section II.C.1. Thus, at this stage of the proceeding, we need not address Patent Owner’s claim construction arguments in order to resolve the parties’ disputes about the asserted grounds of unpatentability.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“3. Reason to Combine Petitioner argues that a person of ordinary skill in the art would have had reason to combine the cited teachings of Teo and Madoukh. Pet. 16–17 (citing Ex. 1003 ¶ 103). In particular, Petitioner presents evidence that a person of ordinary skill in the art “would have been motivated to combine Teo’s system for receiving and using keys with associated lifetimes with Madoukh’s ‘key lifetime manager’ for monitoring the expiration of keys, requesting new keys when old keys have expired, and deactivating expired keys.” Id. at 16 (emphases omitted). For example, a person of ordinary skill in the art “would have understood that Teo’s DMK would expire . . . and one would need to implement a component for tracking the DMK’s expiration, requesting a new DMK upon such expiration, and deactivating the expired DMK, such as Madoukh’s key lifetime manager.” Id. at 17 (citing Ex. 1003 ¶ 103) (emphases omitted). Petitioner also presents evidence that a person of ordinary skill in the art “would have reasonably expected success when combining Teo and Madoukh.” Id. (citing Ex. 1003 ¶ 104) (emphases omitted). At this stage of the proceeding, Petitioner shows sufficiently that it would have been obvious to combine the cited teachings of Teo and Madoukh.” slip op. at 12
Claim construction§ 103 obviousnessPatents in suitUS 9,438,572 - PTAB · Oct 12, 2023 · IPR2023-00614 · APJ Zhenyu Yang · IPR · Institution
The Board instituted review of claims 1–3, 6–18, 21–24, and 27–29 on all asserted grounds, finding a reasonable likelihood of obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons provided below, we determine Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Patent Owner has not persuaded us to exercise our discretion to deny institution. Accordingly, we institute an inter partes review of all challenged claims based on all grounds raised in the Petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“consider “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics, 8. We focus our analysis on Ducharme, one of the primary references asserted in the Petition. Although Ducharme was “not before the Office during examination of the [’]895 Patent,” Patent Owner asserts that it is cumulative to a reference that “was presented to the Office during examination by IDS.” Prelim. Resp. 42–43. Patent Owner does not point to, and we have not found, any evidence showing discussion or application of the previously presented reference by the Examiner during prosecution of the ’895 patent or its related patents. In other words, “the record of the Office’s previous consideration of the art is not well developed or silent.” Advanced Bionics, 10. In such situations, “a petitioner may show the Office erred by overlooking something persuasive.” Id.; see also id. at 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). On this record, Petitioner has shown sufficiently that the Examiner overlooked Ducharme’s teachings of the limitations that were the basis for allowing the challenged claims. Indeed, the Examiner allowed the challenged claims, stating that the closest prior art references lack the teachings of the emitted light being suitable for the commercial image recording when the emitted light is simultaneously at least 1000 lumens when either the first or the second LEDs are lit, is broad-spectrum white light having a color deviation corresponding to less than 5 points of both green and magenta of color compensation, and has a color rendering index of light emitted from each of the first or the second LEDs (whichever is lit) that is greater than 90. Ex. 1002, 150. Petitioner’s evidence indicates that Ducharme teaches an LED light suitable for commercial image recording that includes a plurality of first white LEDs having a first spectrum and a plurality of second white LEDs having a second spectrum. See, e.g., Ex. 1005, 4:1–7. Petitioner’s evidence also indicates that a person of ordinary skill in the art would have had reason to select first white LEDs with a daylight spectrum and second white LEDs with a tungsten spectrum. See, e.g., Ex. 1003 ¶ 449; Ex. 1006 ¶ 53. Further, Petitioner’s evidence indicates that LEDs satisfying the light quality parameters recited in the challenged claims were known to those of ordinary skill in the art. See, e.g., Ex. 1003 ¶ 480; Ex. 1005, 25:36–43; Ex. 1007, 7:11–15; Ex. 1008, 4:1–3. Thus, the evidence cited in the Petition demonstrates that the Office” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The parties agree that, for purposes of this Decision, no claim term needs specific construction beyond its plain and ordinary meaning. Pet. 14; Prelim. Resp. 14. Claim terms need only be construed to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011). On this record and for purposes of this Decision, we see no need to address the construction of any claim term.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LEDs.” Pet. 14 (citing Ex. 1003 ¶ 32). Patent Owner does not dispute Petitioner’s definition of the skill level at this stage of the proceeding. Prelim. Resp. 13. For purposes of this Decision, we adopt Petitioner’s definition of the skill level because it is consistent with the prior art’s demonstration of the skill level at the time of the invention.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 10,566,895 - PTAB · Oct 10, 2023 · IPR2023-00611 · APJ Christopher L Crumbley · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 7–13, 23, 25, 26, 28, 29–39, and 41–45 on all asserted grounds, finding a reasonable likelihood of success over Mueller, Ansems, and Simon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2022). 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.”” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 8. Central to this analysis is factor (c) of Becton, Dickinson, which “focuses on the record developed by the Office in previously reviewing the art or arguments.” Id. at 10. In cases where the Office raised a specific teaching of a reference during prosecution, and the petitioner disagrees with that specific finding of record, “then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record.” Id. On the other hand, we are often presented with circumstances such as those found in the present case, where the prior art that was previously presented to the Office was not substantively remarked upon or applied in a rejection of the claims. This often occurs in the context of art submitted on an IDS, which is the manner in which the majority of the references identified by Colt in this case were incorporated into the file history. Ex. 1002, 216 (Kit, Ducharme ’261, Mueller ’029), 217 (Katzir). Only Simon” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Skill Quasar asserts that a person of ordinary skill in the art at the time of the invention would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 16 (citing Ex. 1003 ¶¶ 32–33). Colt does not dispute Quasar’s characterization of the level of skill, arguing that “the proposed level of ordinary skill does not affect the ultimate analysis.” Prelim. Resp. 15. At this stage of the proceeding, we adopt Quasar’s definition of the level of skill in the art, which is consistent with the disclosure of the ’224 patent and asserted prior art of record. If the parties disagree with our preliminary finding, they are invited to further brief the issue of level of ordinary skill in the art and, in particular, which disputed issues material to patentability turn on the definition adopted by the Board.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“35 U.S.C. § 282(b), as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. See 37 C.F.R. § 42.100(b) (2022). Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13. Both parties agree that the terms of the claims of the ’224 patent should be given their ordinary and customary meaning, but neither party further elaborates on what those meanings are for any particular claim term. Pet. 16–17; Prelim. Resp. 15. We interpret the parties’ positions to be that no claim term of the ’224 patent requires express construction for purposes of deciding whether to institute trial. Upon review of the record and the parties’ arguments, we agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,197,224 - PTAB · Oct 10, 2023 · IPR2023-00613 · APJ Robert J Weinschenk · IPR · Institution
Instituted IPR on claims 1–3, 6–14, 16–19, 21–24, and 26–31 on all petitioned grounds; petitioner showed a reasonable likelihood of prevailing on obviousness over Ducharme, Ianiro, Katzir, and Hasnain.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain. Pet. 47–75. For the reasons discussed below, Petitioner demonstrates a reasonable likelihood of prevailing in showing that claims 1–3, 6–14, 16–19, 21–24, and 26–31 would have been obvious over Ducharme, Ianiro, Katzir, and Hasnain.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a Bachelor of Science degree in electrical engineering, or a closely related field, along with at least two years of experience in the design of entertaining lighting systems, and the design and use of LED lights.” Pet. 13 (citing Ex. 1003 ¶ 32). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Mr. Fred Holmes. Ex. 1003 ¶ 32. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 12. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms at this stage of the proceeding. Pet. 13; Prelim. Resp. 12–14. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,411,582 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00526 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–20 for the asserted § 103 ground over Frenger and the LTE references, finding a reasonable likelihood of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following 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). A.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless 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.” See 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 13 (citing Haas Decl. ¶ 31). Patent Owner does not address this issue. See generally Prelim. Resp. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“claim interpretation that measurement reports, where each report is based on measurements from a single terminal, will not satisfy the claim requirement of “receiving measurement reports from the plurality of terminals.” We determine that receiving a first measurement report from one terminal, followed by receiving a second report from a second terminal, and so on, satisfies the plain meaning of this requirement. There is nothing in the ’590 patent that more narrowly defines this requirement, or disavows this plain meaning interpretation. Frenger discloses that: Terminals regularly scan for neighboring cells. The synchronization signals transmitted in a neighboring cell are used to find and synchronize to a potential neighbor. Active terminals typically also report the received signal strength of reference signals (RSRP (Reference Signal Received Power) measurements) transmitted by the neighboring cells to the network, which takes a decision if the terminal should be handed over to the candidate cell. Ex.1004 ¶ 30. When a handover decision is made for a destination cell that is inactive, the network wakes up the idle cell. Id. at ¶ 40. As Patent Owner admits, “Frenger . . . is referring to measurement reports that are in general received from each of the given terminals separately . . . .” Prelim. Resp. 19 (citing Ex. 1004 ¶ 30). Thus, Frenger discloses “measurement reports from the plurality of terminals,” within the plain meaning of that phrase, given that Frenger provides for multiple terminals scanning for neighboring cells, and reporting the results of signal strength measurements.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,210,590 - Ericsson Inc. v. Koninklijke KPN N.V.InstitutedPTAB · Oct 2, 2023 · IPR2023-00525 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted review of claims 1–11 on all asserted grounds, finding a reasonable likelihood that claims 1–3, 5–7, and 9–11 are anticipated by Eisl and claims 1–11 are obvious over Eisl.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Further, a decision to institute may not institute on fewer than all claims challenged in the petition. 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“On balance, we determine that Fintiv factors 1–5 do not favor discretionary denial of institution. Specifically, we determine that Petitioner’s stipulation and reasonable diligence in filing the Petition as well as the parties’ minimal investment in the District Court Litigation outweigh the projected trial date. See Director’s Memo at 8 (“[W]hen analyzing the proximity of the court’s trial date under factor two of Fintiv, when other relevant factors weigh against exercising discretion to deny institution or are neutral, the proximity to trial should not alone outweigh all of those other factors.”). As a result, we need not decide whether Petitioner presents a compelling unpatentability challenge. See CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (decision on Director review) (precedential) (“[I]n circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.”). 7. Summary Based on our holistic view of the Fintiv factors, we decline to exercise our discretion under § 314(a) to deny the Petition.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner demonstrates that the Examiner overlooked specific teachings of Eisl with respect to the claim limitations that the applicant added to obtain allowance of the challenged claims. In particular, as discussed in detail below, Petitioner presents evidence that Eisl teaches counting “in the core network a number of occurrences of a certain predetermined signal associated with the mobile telecommunications device, the certain predetermined signal representing an interaction between network devices in the core network.” See Section II.E.1. As a result, on this record, we determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of challenged claims. 3. Summary For the reasons discussed above, we decline to exercise our discretion under § 325(d) to deny the Petition.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“C. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “a degree in electrical engineering or a similar discipline, with at least two years of relevant industry or research experience, including designing or implementing network systems,” as well as “familiarity with the wireless standards and protocols relating to subscriber management.” Pet. 17. Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. James Olivier. Ex. 1003 ¶¶ 34–43. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. Prelim. Resp. 3. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 10,924,500
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.