- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution deniedPTAB · Oct 10, 2024 · IPR2024-00040 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–15 were unpatentable, principally because Orr’s trigger circuit was not shown to be a processor.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“patent. The term processor appears only once in the entire Specification.11 That passage in the Specification states: The inertial sensor 23 could be an accelerometer with embedded power processing capabilities and which is always powered on in the first low power mode. The embedded power processing capabilities comprise a processor or other processing means for executing programmable software code for analysing the accelerations values delivered by the accelerometer, and for generating signals or values when certain conditions are met. Ex. 1001, 6:15–22 (emphasis added). We read the phrase “for executing programmable software code” as referring back to both the “processor” and the “other processing means.” The disjunctive “or” between “processor” and “other processing means” binds the two together as the subject being addressed. Accordingly, we know from the Specification’s only disclosure of the term, that a “processor” in an inertial sensor has a structure that is configured to execute programmable software code.12” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyOther
“Neither party suggests that “processor” invokes 35 U.S.C. § 112, paragraph 6. Nor do we so find. Thus, the Halliburton Rule against functional claiming still applies to “processor” and we do not construe that term to cover any structure which performs the recited function of “discriminating between gesture and no gesture based on a direction of said acceleration signal as measured by said accelerometer being a three dimensional accelerometer and on a slope or frequency of said acceleration signal.”” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“First, Petitioner has not asserted, much less demonstrated, that only a processor, and nothing else, can be used to detect a specific gesture, detect each component of the gesture, and analyze each component to determine whether a gesture has been properly formed. Although a processor may perform those functions, the record is inadequate to show, even for institution purposes, that only a processor, nothing but a processor, can perform those functions and that one of ordinary skill in the art would have so recognized. Thus, the fact that trigger circuit 38 detects a specific gesture, detects each component of the gesture, and analyzes each component to determine whether the gesture has been properly formed, does not make trigger circuit 38 a processor. Further, nothing indicates trigger circuit 38 is configured to execute programmable code. Second, that there are processors elsewhere in the system but in sleep mode at the time the inertial sensor operates does not persuade us that trigger circuit 38 itself must be a processor. This argument assumes, without supporting evidence and explanation, the stated functions of the trigger circuit can only be performed by a processor. Again, nothing indicates that trigger circuit 38 is configured to execute programmable code. Third, Petitioner has not explained the presence of switch 41 and comparator 46 within trigger circuit 38, neither one of which, on this record, is shown as having anything to do with execution of programmable code. Fourth, Orr describes that Main Accelerometer Sub-sys 42 in trigger circuit 38 includes a second motion sensor which is activated by a signal from switch 41 and which provides output signal 44 to threshold comparator 46. Ex. 1005, 7:3–17. Petitioner has not adequately explained the presence of this second motion sensor within Main Accelerometer Sub-sys 42. On this record, a motion sensor, such as the second motion sensor in Main Accelerometer Sub-sys 42, has not been shown to have anything to do with execution of programmable code. For all of the foregoing reasons, Petitioner has not adequately accounted for limitations 14[E][1] and 14[E][3]. In short, trigger circuit 38 is not configured to execute programmable code and so has not been shown to teach or suggest the processor limitation. Petitioner has not shown a reasonable likelihood that it would prevail in establishing obviousness of claim 14 over Orr and Orr682.” slip op. at 24
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, and consistent with the Director’s remand instructions, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’678 patent. Accordingly, we decline to institute an inter partes review of the challenged claims of the ’678 patent. B.” slip op. at 3
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,804,678 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Oct 4, 2024 · IPR2024-00725 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–22 were unpatentable; Yagasaki did not disclose the claimed intentional discontinuity in image-frame numbering.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C.§ 314(a). 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) (footnote omitted). Upon consideration of the contentions of the parties and the evidence before us, we conclude that Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’134 patent. We decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Havlicek and not 8 The record does not include any evidence of secondary considerations of nonobviousness. disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Also, our conclusion would be the same even if we applied Patent Owner’s stated level of ordinary skill in the art. C.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner has not proposed a construction for any claim term and asserts that “no constructions are necessary to resolve any disputes identified in this Petition.” Pet. 7 (footnote omitted). Patent Owner does not disagree and also has not itself proposed any construction. Prelim. Resp. 9. We find that no express construction for any claim term is necessary. D.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“According to limitation 1[a], the decoded “indication” must “inform[] an intentional discontinuity of numbering of the image frames.” Petitioner has not sufficiently shown any discontinuity of the numbering of image frames. Patent Owner asserts that “Petitioner relies on continuously incremented ‘temporal_reference codes’ as the claimed numbering, but these continuously incremented ‘temporal_reference codes’ never have a discontinuity.” Prelim. Resp. 11. We determine that Petitioner has not sufficiently shown, for institution purposes, a discontinuity in these temporal_reference codes. Petitioner’s argument assumes, without adequate supporting basis, that when a duplicate picture is eliminated by the encoder such that no image picture content is provided in the encoder output, the temporal_reference code for that duplicate picture is also eliminated and not provided in the encoder output to be furnished to the decoder. To prevail, this alleged fact must be sufficiently shown and not assumed. The Petition made no adequate showing. Yagasaki expressly states: “The temporal reference generator [within the encoder] feeds the temporal reference code to the variable-length coder 1006 for inclusion in the coding apparatus output signal VC1.” Ex. 1005, 19:27–29. We find no statement or indication of an exception for a duplicate picture of which the image data is “eliminated,” and Petitioner has not pointed us to any such description.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,204,134 - Cisco System, Inc. v. Umbra Technologies Ltd.Institution deniedPTAB · Aug 7, 2024 · IPR2024-00498 · APJ Michael R Zecher · IPR · Institution
The Board denied institution because Cisco did not show a reasonable likelihood that claims 1–26 were obvious over Shieh and Potti, principally for lack of a sufficient rationale to combine.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Preliminary Reply, and UMBRA’s Preliminary Sur-reply, we conclude that the information presented in the Petition does not demonstrate that there is a reasonable likelihood that Cisco would prevail in challenging any one of claims 1–26 of the ’482 patent as unpatentable. IV. ORDER In consideration of the foregoing, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 22
- Skill levelSkill level petitioner adoptedOther
“current record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Reddy, Cisco argues the following: a [person of ordinary skill in the art] in April 2015 timeframe would have been familiar with communication networks having a distribute firewall system in the cloud. A [person of ordinary skill in the art] would have a working knowledge of the function performed by firewalls including stateful inspection and deep packet inspection. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in computer science and two years of experience; or by obtaining a Master’s degree in computer science, but having only one year of experience; or by having no formal education but experience in computer network security of at least four years. Pet. 14 (citing Ex. 1003 ¶ 40). UMBRA does not address the level of skill in the art in its Preliminary Response. See Prelim. Resp. 1–16. To the extent necessary, and for purposes of this Decision, we adopt Cisco’s assessment of the level of skill in the art because it is supported by the testimony of Dr. Reddy and it is consistent with the ’482 patent and the asserted prior art.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“Notably absent from the “State of the Art” section is a specific reason why a person of ordinary skill would take Potti’s disclosure of performing DPI on a cloned copy of traffic and apply it to Shieh’s service processing module 313, which Cisco relies on to teach the claimed “second perimeter firewall.” See Pet. 15–19; see also id. at 40 (arguing that Shieh’s service processing module 313 (pink) teaches the claimed “second perimeter firewall”). Instead, Cisco generally discusses the evolution of firewall technology and its move to the cloud as of April 2015, but does not identify the benefits that result from modifying Shieh in this way. At best, Cisco asserts that “[t]he prior art references, and the discussions of what was known to a [person of ordinary skill in the art], provide the factual support for the general description of the state of the art at the time of the invention, and provide additional motivation to modify or combine the references.” Pet. 15. In our view, merely providing a general description of the state of the art and asserting that it provides a motivation to combine, without providing the necessary factual underpinnings to support the purported benefits that result for combining the relevant teachings of Shieh and Potti, is akin to stating in a conclusory fashion that this proposed combination “would have been obvious.” See In re Van Os, 844 F.3d 1359, 1362 (Fed. Cir. 2017) (explaining that “a finding that a combination of prior art would have been ... ‘intuitive’ is no different than merely stating the combination ‘would have been obvious’ ”).” slip op. at 19
- Expert testimonyPetitioner expert discountedOther
“A review of Cisco’s testimony from its declarant, Dr. Reddy, reveals no additional explanation as to why a person of ordinary skill would have been motivated to combine the teachings of Potti with those of Shieh. See Ex. 1003 ¶¶ 130–137. These portions of Dr. Reddy’s testimony merely parrot the arguments presented by Cisco in the Petition. That is, he relies on a general description of the state of the art, without providing any additional explanation beyond the bare assertion in the Petition that a person of ordinary skill would have used purported “well-known techniques” to combine Shieh’s service processing module 313 with Potti’s disclosure of performing DPI on a cloned copy of traffic.” slip op. at 21
§ 103 obviousnesscites KSRPatents in suitUS 10,574,482 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00507 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Apple did not show a reasonable likelihood of proving claims 2, 4–6, 12, 15, 21, 23–25, 31, and 34 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, she or he was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not provide written description support for the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“and assuming that Cheng discloses backing up of data from a first user device to a second, new user device, without any user service bureau in between, Petitioner has not shown sufficient motivation to combine the teachings of Kodama with the teachings of Kesanupalli and Cheng to account for the remainder of limitation [1.8], i.e., initiate the backup “based at least in part on the first device being a same brand as a second device.” Ex. 1001, 25:7–10. Petitioner explains:” slip op. at 40
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00333 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not indicate possession by the inventor the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25. Patent Owner states: “A determination ‘based on’ policies and the identity of the device would have conveyed to a POSITA that the backup could have been based on a policy including the device being of the same brand as the second device.” Prelim. Resp. 46 (emphasis in original). The assertion is misplaced because it refers to what “could have been” a policy, rather than what policy the provisional application disclosure conveys the inventor actually possessed. What potentially “could have been” is mere speculation, not written description indicating possession.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). 9 The record does not include any evidence of secondary considerations of nonobviousness. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts: Kodama recognizes “if data restoration is to be performed to a different product or a different manufacturer, the format and product proprietary information of data between the products will differ.” APPL-1010, [0157]. POSITA would recognize this differing format can create compatibility issues and thus would recognize an advantage of, and reason for, basing the initiation of data transfer to the second device on brand and thereby avoiding these compatibility issues as taught by Kodama. APPL- 1003, ¶190. Pet. 60. But the same brand requirement of Kodama is not provided to solve any problem with differing formats. Kodama states: At Step 1313 of the restoration processing, if data restoration is to be performed to a different product of a different manufacturer, the format and product proprietary information of data between the products will differ. Thus, before the restoration processing function of the online backup service system 0128 sends the data read at Step 1318 to the HDD recorder 0116, the data format is converted into the file format of the HDD recorder 0116 of the restoration destination. Ex. 1010 ¶ 157. Kodama does not describe format compatibility as presenting any problem. Requiring brand identity between the first device and the other devices of the user in Jakobsson ’351 to synchronize data among all of the user’s devices is also not an advantage. The devices of the user in Jakobsson ’351 are devices the user already owns, possesses, and uses. They are not a new device as in the case of Kodama, where a broken device may be expected to lead to the user acquiring a new device of the same brand as replacement. Petitioner provides no explanation as to why one would expect all of the user’s devices in Jakobsson ’351 would be of the same brand. Applying a same-brand requirement would substantially undermine and may even render inoperative Jakobsson ’351’s feature of synchronizing user data among all of the user’s devices. We do not see this result as either an advantage or an improvement.” slip op. at 51
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution deniedPTAB · Apr 9, 2024 · IPR2024-00041 · APJ St John Courtenay III · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–10 were unpatentable under any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’085 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art (POSITA). In assessing the level of ordinary skill in the art, various factors may be considered, 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) (quoting Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “[O]ne or more factors may predominate.” Id.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“We disagree with Petitioner, Dr. Bederson, and Patent Owner on this point, because at least one of their disputes centers on the meaning of first and second power modes. We again emphasize that “[i]n an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (emphasis added). Here, in its Petition and Dr. Bederson’s supporting declaration (Ex. 1002 ¶ 123)), neither Petitioner nor Dr. Bederson has proposed any claim construction for the claim 1 terms “first power mode” and “second power mode.” See 37 C.F.R. § 42.104(b)(3) (the petition must set forth “how the challenged claim is to be construed.”). However, on this record, we determine the claim 1 terms “first power mode” and “second power mode” require explicit claim construction as a principal threshold issue in our institution decision. And Petitioner has not done so.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“than two power modes can be provided” (Ex. 1001, 5:58–59), for purposes of our claim construction in deciding whether institute an inter partes review, we focus on the corresponding supporting descriptions supra of the first and second power modes. As described within the ’085 patent, switching between first and second power modes seems to generally require switching physical components, e.g., electrodes, on or off as needed to conserve power. The conservation of power comes from a device being ready or not ready, set or not set, to perform a function, rather than actually performing or not performing a function. Petitioner has the burden to show how the first and second power modes of claim 1 of the ’085 patent might be alternatively interpreted as modes involving different power usage levels due to the selective usage of applications available for use, instead of different power usage levels due to switching physical components on or off, rendering them available or unavailable for use, consistent with the many supporting descriptions found in the ’085 patent, as reproduced above.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,198,085 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Slyde Analytics, LLCInstitution deniedPTAB · Apr 5, 2024 · IPR2024-00002 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any of claims 1–24 unpatentable, principally because the asserted combinations did not establish the required full-display card replacement limitations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’922 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and 2-3 years of experience in the research, design, development, or testing of graphical user interfaces, touchscreens, and mobile devices, with additional education substituting for the experience and vice-versa.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. 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))). Petitioner asserts that “Petitioner does not believe any term requires construction.” Pet. 6. Patent Owner asserts that it “believes that claim construction is not required to resolve any issues.” Prelim. Resp. 7. We agree that on this record it is not necessary to conduct express claim construction for any term. C.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner adds: “It would have been obvious to apply the same teaching to Figure 5B and to a wearable device such as a watch,” referring to Louch’s description in paragraph 67 that widget 402 “can consume the entire display area 406 or a portion thereof.” Pet. 21 (citing Ex. 1002 ¶¶ 51–59, 116). No reasoning or rationale, however, is provided in the Petition for sizing the scrolling widgets to fill the whole or entirety of the display. Only a conclusory statement of obviousness is provided in the footnote. We have reviewed each of the cited paragraphs in Dr. Bederson’s Declaration and could find nothing supportive in that regard in any of cited paragraphs 51–59 for Petitioner’s conclusory statement about sizing the scrolling widgets to the whole or entirety of the display. There is one sentence in the last cited paragraph, paragraph 116 of Dr. Bederson’s Declaration, which provides a reasoning for sizing the scrolling widgets to be the whole or entirety of the display. However, we decline to consider it, because “[a]rguments must not be incorporated by reference from one document into another document.” 37 C.F.R. § 42.6(a)(3). Also, embedding reasoning in the expert’s Declaration and not expressly stating the same in the Petition fail to give Patent Owner adequate notice to respond. Patent Owner did not respond to this extraneous argument, improperly incorporated by reference from Dr. Bederson’s Declaration into the Petition.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,651,922 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01107 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood of prevailing on claims 9–14 and 16 under either asserted obviousness combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” In claim 13, limitations [13D]–[13H] similarly recite “pilot identification information.” The Petition does not address the scope and meaning of these claim terms, but Patent Owner argues (Prelim. Resp. 44–46, 57–60; Prelim. Sur-Reply 2–3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - Dji Europe B.V. v. Textron Innovations Inc.Institution deniedPTAB · Feb 13, 2024 · IPR2023-01106 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because DJI did not show a reasonable likelihood of proving claims 1–5, 7, and 8 obvious, due to deficient and inconsistent treatment of “pilot identification information.”
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted 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.” Upon consideration of the Petition and the evidence of record, we determine Petitioner has not demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’950 patent. Accordingly, we do not institute inter partes review.” slip op. at 2
- BurdenDecided for patent owner
“inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden to show a likelihood of prevailing in its challenge to independent claim 1 as presented in the Warner-Wakutsu-Shavit grounds, nor dependent claims 2– 5, 7, and 8, which include the same deficiencies.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“pilot identification information.” The Petition does not address the scope and meaning of this claim term, but Patent Owner argues (Prelim. Resp. 44– 46, 57–59; Prelim. Sur-Reply 3), and we agree, that Petitioner’s analyses of these limitations are inconsistent and deficient. Highlighting the Petition’s inconsistencies, for limitations [1E] and [1J], Petitioner states “in Shavit . . . the pilot ‘types in or selects his name, the name of the co-pilot if any, and the aircraft’s serial number.” Pet. 32 (citing Ex. 1008 ¶ 108). For limitation [1H], however, Petitioner states Shavit’s “user credential for a pilot includes ‘pilot identification information.’” Pet. 39 (citing Ex. 1008 ¶ 87; Ex. 1003 ¶ 116). Responding to Patent Owner’s arguments that those positions are inconsistent (Prelim. Resp. 44–46, 57–59), Petitioner’s Preliminary Reply argues “[Patent Owner] offers no[] explicit construction of ‘pilot identification information’ but implicitly interprets the independent claims to require the identical information be used as ‘pilot identification information’ in each limitation” (Prelim. Reply 4). Critically, though, the same is true of the Petition; Petitioner offers no explicit construction of “pilot identification information,” and Petitioner fails to establish or even address whether each limitation requires identical information as the “pilot identification information.” Indeed, even though Petitioner’s Preliminary Reply acknowledges Patent Owner’s inconsistency arguments and the potential for different interpretations of the claim terms, Petitioner chose not to provide a claim interpretation nor otherwise rectify or clarify the positions taken in the Petition with respect to “pilot identification information.” Instead, Petitioner argues only that Patent Owner takes similarly inconsistent positions in its district-court infringement contentions. Prelim. Reply 5 (citing Ex. 1012, 31, 37, 46). And although Petitioner argues Patent Owner’s claim interpretation in this proceeding is too narrow, Petitioner does not present its own interpretation, much less provide a claim interpretation analysis. Prelim. Reply 1 (arguing “[patent owner] applies a broad interpretation of these terms in the district court to show alleged infringement but in this IPR argues that the plain meaning of the terms is narrow to avoid invalidity”), 5 (referring to Patent Owner’s arguments as a “narrow view of ‘pilot identification information’” that requires a “strict identity interpretation of ‘pilot identification information’ in the ‘transceiver’ and ‘only accessible’ limitations”). Even if Petitioner is correct that Patent Owner arguments treat the patent claims like a nose of wax (Prelim. Reply 1), that cannot alleviate Petitioner’s burden of persuasion and only highlights Petitioner’s failure to provide an interpretation in the face of claim language that is admittedly subject to some range of interpretations. For these reasons, on this record, Petitioner has not carried its burden slip op. at 6
§ 103 obviousnessPatents in suitUS 10,275,950 - PTAB · Feb 7, 2024 · IPR2023-01201 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1, 2, or 5 obvious over either asserted reference combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the RE ’117 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“We adopt Petitioner’s statement of the level of ordinary skill in the art, except that we delete the qualifier “at least,” which renders the statement vague by rendering the scope of ordinary skill unbounded at the top. This level of ordinary skill appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).9 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“1. “display panel” According to Petitioner, “display panel” means “a flat type screen on which images are displayed, such as a Liquid Crystal Display or Plasma Display Panel.” Id. at 17. Patent Owner asserts that Petitioner improperly limits “display panel” to only a “screen” on which images are displayed. Prelim. Resp. 8. Patent Owner states, however, that “construction of this term does not impact the issues in this proceeding.” Id. Patent Owner does not dispute Petitioner’s position that “display panel” includes Liquid Crystal Display and Plasma Display Panel. Therefore, it is not necessary to construe “display panel” for purposes of this decision. “circuit board mounting part” 2. Petitioner proposes a construction for “circuit board mounting part” which appears in each of claims 1, 2, and 5. Pet. 19–25. Our decision, however, does not depend on any construction of the term “circuit board mounting part.” Thus, it is not necessary to construe this term.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“disclosed in Figure 1, especially since “the text of the ’117 patent does not limit the entry/exit of the cooling paths.” Prelim. Reply 2. However, given that the goal of the RE ’117 patent is to avoid inter-heating by providing separate cooling fluid paths, as discussed above, it is not consistent with the Specification to have mixing of the two cooling fluid paths within the panel display device. We are not reading an extraneous limitation from the Specification into the claim. Rather, we are interpreting the limitation “separated from each other” in light of the Specification, which is the single best guide to the meaning of a disputed term. Phillips, 415 F.3d at 1315.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
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.