• Google LLC v. Singular Computing LLCInstitution denied
  PTAB · Jul 25, 2023 · IPR2023-00396 · APJ Jameson Lee · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the arguments and evidence before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’775 patent. The Petition is denied, and no inter partes review is instituted.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the alleged invention “would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36).” slip op. at 14

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “specification of the ’775 patent. But that does not mean “input-output unit” automatically can be construed as encompassing anything that has some tangential involvement in getting data into and out of a component which accepts and provides data. The construction still has to be reasonable and consistent with the specification, even under a broadest reasonable interpretation rule of claim construction that is more lenient than the Phillips standard which applies here. See In re Smith International, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). A particular reading is not deemed consistent with the specification simply because the specification does not expressly preclude that reading. Id. at 1382 (“Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the examiner’s interpretation was reasonable, Board Decision, 2016 Pat. App. LEXIS 3764, at *4, was erroneous.”). Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We need not resolve whether, as Petitioner contends, one with ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, to perform, primarily, image processing applications. Even assuming that one of ordinary skill in the art would have made the proposed modification to Schmidt-2000’s KPROC chip, and successfully in doing so, Petitioner still has not made a sufficient accounting for limitations [1E] and [1J] as we explain below. We proceed to analyze claim 1, assuming as Petitioner contends, that one of ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, i.e., registers having 8 bits instead of 16 bits and all execution units, e.g., adders, multipliers, processing 8 bits at a time rather than 16 bits.” slip op. at 26

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 11,169,775
• Google LLC v. Singular Computing LLCInstituted
  PTAB · Jul 25, 2023 · IPR2023-00397 · APJ Ken B Barrett · IPR · Institution

  The Board instituted IPR on claims 1–5, 7–14, and 16–23 based on a reasonable likelihood that claims 1–5 are obvious over Stuttard and Shirazi.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’775 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’775 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2

  • Parallel petitionsNot reached

    “patentability of claims of the ’775 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, and 16–23 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00396, Petitioner challenges claims 1–5, 7– 14, and 16–23 as obvious over other references not relied on in the Petition before us. IPR2023-00396, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00396 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00396, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 13

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 6. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections.” slip op. at 14

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 11,169,775
• Google LLC v. Singular Computing LLCInstituted
  PTAB · Jul 25, 2023 · IPR2023-00395 · APJ Ken B Barrett · IPR · Institution

  Instituted review of claims 1–5, 7–14, 16–22, and 24 on obviousness over Stuttard and Shirazi; the Board found a reasonable likelihood of success on claim 1.

  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 . . . 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). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’616 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’616 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2

  • Parallel petitionsNot reached

    “patentability of claims of the ’616 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00394, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over references not relied on in the Petition before us. IPR2023-00394, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and 7 Although there is only one ground in the Petition, Petitioner analyzes the challenged claims as three groups under the headings “Ground 1A,” “Ground 1B,” and “Ground 1C.” See, e.g., Pet. i–v (Table of Contents). 8 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. See Pet. 1, 4 (applying pre-AIA provisions). 9 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61 (explaining that the Board may exercise discretion under 35 U.S.C. Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00394 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00394, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that: A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 5. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections. 1. Input-Output Unit Independent claims 1, 7, and 16 each recite an “input-output unit.”” slip op. at 13

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,754,616
• Nabors Drilling Technologies USA, Inc. v. Motive Drilling Technologies, Inc.No claims unpatentable
  PTAB · Jul 5, 2023 · IPR2022-00327 · APJ Matthew S Meyers · IPR · Final written decision

  Claims 15–17 and 22 were not shown unpatentable because the Pirovolou-based combinations did not establish the comparison required by limitation 15.3.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner asserts a person of ordinary skill in the art would have had a bachelor’s degree in mechanical engineering or petroleum engineering, or a closely related scientific field, and three-five years of work experience related to the design, performance, and control of components and systems used in oil and gas exploration and production, including downhole tools used in drilling applications. A lack of experience can be remedied with additional education, and vice versa. Pet. 7 (citing Ex. 1007 ¶¶ 37–41). Patent Owner does not provide its own assessment regarding the level of skill in the art or otherwise dispute Petitioner’s assertion in its Patent Owner Response. See generally PO Resp.; cf. Prelim. Resp. 29 (Patent Owner indicates that it “has adopted Petitioner’s articulation of the level of skill in the art.”). However, Patent Owner’s declarant, Dr. Hilbert, notes that he is familiar with Petitioner’s definition of the person of ordinary skill in the art, and opines that “the Petition’s articulation of the level of skill accurately reflects that of [one of ordinary skill in the art] with respect to the ’283 [p]atent.” Ex. 2010 ¶ 44 (citing Pet. 7). Based on this record, we apply Petitioner’s definition of the level of skill, which also was applied in our Institution Decision, because it is consistent with the level of ordinary skill in the art at the time of the invention as reflected in the prior art of record. See Okajima, 261 F.3d at 1355.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “After reviewing the full record, we determine that it is unnecessary to construe the term “estimated position of the drill bit in the formation,” to reach a determination in this proceeding. 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)). However, we address the parties’ dispute regarding the meaning of limitation [15.3], i.e., “comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole,” within our merits analysis below. See Pet. Reply 14–15; PO Sur-reply 16.” slip op. at 11

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “construes limitation [15.3] to require that “the comparison [be] performed on two positions ‘along a planned path of the borehole.’” Pet. Reply 14 (emphasis omitted). Petitioner’s proposed construction is inconsistent with the ’283 patent’s Specification and the language of limitation [15.3]. Figure 7C of the ’283 patent, reproduced below, is an illustration of “one embodiment of a convergence plan diagram with multiple convergence paths.” Ex. 1001, 1:56–57. Figure 7C illustrates “the estimated bit position is indicated by arrow 743 relative to the desired bit position 741 along the planned path 742.” Id. at 18:12–14.6 Contrary to Petitioner’s argument that limitation [15.3] “clearly recites that the comparison is performed on two positions ‘along a planned path of the borehole’” (Pet. Reply 14 (emphasis omitted)), we understand limitation [15.3] to recite that only one position, i.e., “a desired position,” is “along a planned path of the borehole.” See Ex. 1001, 36:12–14 (“comparing . . . the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole”).” slip op. at 25

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “Ex. 2010 ¶ 95. We find to be credible Dr. Hilbert’s testimony that, if two points are both along a planned path, a comparison would not indicate whether the drill is outside a margin of error. We also credit Dr. Hilbert’s declaration testimony that the purpose of limitations 15.3 and 15.4 is to compare the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole and calculate more than one solution defining a path from the estimated position of the drill bit to the planned path if the drill bit is off course (i.e., outside a defined margin of error relative to the desired position). Id. ¶ 96. During his deposition, when asked whether “the step of comparing the estimated position of the drill bit to a desired position of the drill bit along a planned path of the borehole is used to determine whether the bit is off course,” Dr. Schubert agreed. Ex. 2013, 73:17–22. Dr. Schubert also agreed that in order “to determine that [the bit]’s off path, you have to look at the planned path, not the projected trajectory.” Id. at 87:16–19. Based on the full record, we agree with Patent Owner that “both parties’ experts agree that the alleged comparison in Pirovolou—a comparison of two points on the same projected trajectory (i.e., a trajectory that has not yet been drilled)— will not be indicative of whether a correction is presently necessary.” PO Sur-reply 18 (citing Ex. 2010 ¶¶ 96–97; Ex. 2013, 73:17–22, 87:16–19). Therefore, Petitioner fails to establish that Pirovolou discloses or renders obvious the comparison recited by limitation [15.3] when read in context with limitation [15.4].” slip op. at 31

  Patent outcomesUS 8,210,283 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,210,283
• Ebates Performance Marketing, Inc., D/B/A Rakuten Rewards v. International Business Machines Corp.Some claims unpatentable
  PTAB · May 24, 2023 · IPR2022-00133 · APJ Kevin W Cherry · IPR · Final written decision

  Claims 1, 3–6, 13, and 15–18 are unpatentable as obvious; claims 2, 7–12, and 14 were not shown unpatentable.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner

    “consistently’ characterizes a claim term in a particular way, it is proper to construe the claim term in accordance with that characterization.” GPNE, 830 F.3d at 1370. It is also true that “[e]ven when the specification describes only a single embodiment, the claims of the patent will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” Hill-Rom Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1372 (Fed. Cir. 2014) (internal quotation marks and alteration in original); see also Verizon, 503 F.3d at 1302–03 (“The mere fact that the specification’s examples of translation may involve a change in protocol from a higher to a lower level protocol does not establish that such a limitation should be imported into the claims.”). Thus, the mere fact that the examples in what the Specification clearly identifies as “preferred” embodiments (Ex. 1001, Abstract, 5:1–3, 5:55–59, 6:6–8, 6:67–7:4, 7:23–25) cannot, by themselves, limit the scope of the claims. See Phillips, 415 F.3d at 1323 (noting “we have expressly rejected the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”).” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have at least a bachelor’s degree in computer science or a related field, plus at least two years of experience in the design and implementation of graphical user interfaces, and would have familiarity with portal design and portlet technology. Additional education in the fields of computer science and/or human factors, such as a masters or doctorate degree, may serve as a substitute for experience in the field.” Pet. 10 (citing Ex. 1003 ¶ 32). Patent Owner applies Petitioner’s level of ordinary skill in the art for purposes of this proceeding. See PO Resp. 15. 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 9

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “Figure 3 illustrates a plurality of portlets relative to a first sub-tab and Gridsphere2’s Figure 2 illustrates a single portlet relative to a first sub-tab, and that other sub-tabs are illustrated in Gridsphere1 and Gridsphere2, which would include one or more portlets. Ex. 1003 ¶ 141. As Dr. Bederson explains, these tabs define “two or more stacks of portlets.” Id. Dr. Bederson illustrates this with an annotated version of Figure 2 from Gridsphere2 reproduced below. An annotated version of Figure 2 of Gridsphere2 showing a first stack of portlets currently presented and second stack of portlets not currently presented. Ex. 1003 ¶ 141. Dr. Bederson explains that Figure 2 shows “the Administration main tab includes a first stack of portlets, having at least one portlet in the Portlets, Users, and Groups sub-tabs, respectively (highlighted in red).” Id. Dr. Bederson testifies that It is also obvious to a [person of ordinary skill in the art] that the Welcome main tab (highlighted in green) (or the JSR Portlets tab) would also have a plurality of sub-tabs, each with at least one portlet. This defines a second stack of portlets, which second stack of portlets is not currently displayed. Id. We find Dr. Bederson’s testimony to be rational, well-reasoned, and give it substantial weight. Dr. Bederson further persuasively testifies, “[t]o render the portal in” slip op. at 30

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundMixed

    “The motivation-to-combine analysis is a flexible one. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1379 (Fed. Cir. 2023). A motivation to combine may be found “explicitly or implicitly in market forces; design incentives; the ‘interrelated teachings of multiple patents’; ‘any need or problem known in the field of endeavor at the time of invention and addressed by the patent’; and the background knowledge, creativity, and common sense of the person of ordinary skill.” ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1371 (Fed. Cir. 2018) (quoting Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013)). “[T]he motivation-to-combine analysis ‘need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.’” PACT XPP, 61 F.4th 1380 (citing KSR, 550 U.S. at 418). We find that Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have been motivated to combine Rose with the GridLab references. See Pet. 64–67; Ex. 1003 ¶¶ 216–223. In particular, we agree with Petitioner and Dr. Bederson that applying Rose’s technique to the GridLab References would have been within the level of skill in the art, and that a person of ordinary skill in the art “would find it beneficial to index the new portlet [being suggested to be added by GridLab], as per Rose, and compare those indexing results to the existing portlets of the user’s portal, and suggest a tab or sub-tab for the new portlet in the user’s portal, or automatically place the portlet in a content-relevant tab or sub-tab in the user’s portal, as per Rose.” Ex. 1003 ¶ 222 (citing Ex. 1004 § 10.1.6 (40); Ex. 1012, 262–64, 267–68). We address Patent Owner’s arguments below.” slip op. at 49

  Patent outcomesUS 7,543,234 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,543,234
• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00137 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution of IPR challenging claims 1–4, 6–11, and 13–14, exercising § 314(a) discretion under Fintiv after finding the parallel litigation advanced and the merits not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherInstitution denied

    “F. Summary Regarding Fintiv Factors 1–5 In summary, factors 1–3 and 5 weigh in favor of exercising our discretion to deny institution and factor 4 weighs somewhat against exercising our discretion to deny institution. Considering these factors as a whole, we determine that these factors weigh in favor of exercising our discretion to deny institution.” slip op. at 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). Under 35 U.S.C. § 314(a), 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.” Having considered the parties’ submissions, and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review.” slip op. at 2

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Patent Owner’s arguments, even if they would eventually prove to be unpersuasive, raise substantial concerns about the strength of Petitioner’s case. Much of Petitioner’s case for the presence of claim limitations in the prior art is not derived directly from Kobayashi but rather requires extensive modifications to Kobayashi’s apparatus, and the Petition relies heavily on the testimony of Dr. Valenti to supply the bases for those modifications. We acknowledge Petitioner’s argument that Patent Owner admitted that the use of memory locations and the use of indices were well known in encoding apparatuses. See, e.g., Pet. 14–15, 21; Pet. Reply 3. However, that such things were well known is not dispositive as to whether a permutation module configured to utilize those things in the specifically recited way, along with the remainder of the overall claimed subject matter, would have been obvious. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenge does not plainly lead to a conclusion that one or more claims are unpatentable as being obvious over Kobayashi.” slip op. at 27

  • Skill levelSkill level petitioner adoptedOther

    “Pet. 4–5 (citing Ex. 1002 ¶¶ 21–22). Patent Owner, at this stage, does not disagree or propose a different definition of the person of ordinary skill in the art. We determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’833 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we adopt Petitioner’s description of the person of ordinary skill in the art.” slip op. at 18

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,284,833
• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00133 · APJ Ken B Barrett · IPR · Institution

  The Board denied institution under Fintiv because the advanced parallel litigation outweighed the stipulation, and the petition did not present compelling merits for any challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “We agree that Kobayashi provides scant details on the operation of its outer encoder, which Petitioner attempts to fill in with expert testimony on Hamming coders and matrix multiplication generally. See Ex. 1002 ¶¶ 28– 35, 65. Patent Owner, on the other hand, provides argument based on Kobayashi’s disclosure and Petitioner’s own characterization of that disclosure that appears, on this record, to contradict Petitioner’s arguments. Even if, hypothetically, we were to deem Petitioner’s showing on the record before us to be adequate under the lesser reasonable likelihood standard (again, a finding we do not make), we apply a higher compelling merits standard for our analysis of the sixth Fintiv factor, and find Petitioner has not met that higher standard. In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling.” slip op. at 31

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,421,032
• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00130 · APJ Amber L Hagy · IPR · Institution

  The Board denied institution on all challenged claims under § 314(a), finding the advanced parallel litigation outweighed the stipulation and the merits were not compelling.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied

    “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In short, on the record before us, for the reasons noted above, we do not view Petitioner’s evidence as plainly leading to a conclusion that one or more claims are unpatentable by a preponderance of the evidence. See Interim Procedure 4. We, therefore, find Petitioner’s showing as to the independent claims is not compelling. Petitioner’s arguments for the dependent claims and the other grounds (including the ground based on the combination with McEliece) (Pet. 19–56) do not cure the above deficiencies. Thus, Petitioner’s showing of unpatentability is not compelling for any of the challenged claims under any of the asserted grounds.” slip op. at 29

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,116,710
• Samsung Electronics Co., Ltd. v. California Institute Of TechnologyInstitution denied
  PTAB · May 4, 2023 · IPR2023-00131 · APJ John A Hudalla · IPR · Institution

  The Board denied institution for claims 3–18 and 22 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied

    “The district court has already denied a motion for a stay, and the reasoning in its decision on the motion indicates that the court is unlikely to grant a renewed motion. See Ex. 2002, 5–6 (finding that the advanced stage of the underlying litigation disfavors a stay and that a stay is unlikely to simplify the issues in the underlying litigation). Thus, we find that this factor weighs in favor of exercising authority to deny institution. See Fintiv, Paper 11 at 6–7.” slip op. at 14

  • BurdenNot reached

    “Although we need not fully resolve these issues for our “compelling merits” determination, we note that Patent Owner makes several arguments that call into question whether Petitioner would ultimately succeed with its unpatentability challenges relative to its analysis for the recited “codeword.” Petitioner’s contentions hinge on its assertion that an ordinarily skilled artisan “would have understood that this encoded sequence I4 is a codeword because the output of an encoder such as Kobayashi’s precoder is a codeword.” Pet. 15 (citing Ex. 1002 ¶ 68).8 We agree with Patent Owner that Petitioner’s analysis appears to (1) rely on circular reasoning; and (2) run counter to Kobayashi’s disclosure of the inner encoder in Figure 8 as comprising both the precoder and duobinary signaling blocks. See Ex. 1005, 7:9–11, Fig. 8. We also have considered Dr. Valenti’s testimony that an ordinarily skilled artisan would have understood the output of Kobayashi’s precoder to be a codeword. See Ex. 1002 ¶ 45. In support of this testimony, Dr. Valenti cites only general background testimony on error control coding and Kobayashi’s use of “codeword” with respect to the Hamming encoder. See id. Yet Dr. Valenti’s background testimony does not address whether an ordinarily skilled artisan would have regarded a precoder alone to be an 8 Petitioner cites to paragraph 68 of Dr. Valenti’s declaration, but his more relevant testimony supporting this proposition is found at paragraph 45, which we discuss below. encoder. See id. ¶¶ 24–27. And Kobayashi’s characterizations regarding the output of the Hamming encoder, which is a different element, do not necessarily apply to the precoder, which is only a portion of Kobayashi’s inner encoder. See Ex. 1005, 7:50–8:2. Thus, even if we were to find that Petitioner’s contentions support a reasonable likelihood of unpatentability, we would have significant open questions for resolution at trial. Under these circumstances, and based on the present record, we do not find “compelling merits” because Petitioner’s challenges do not plainly lead to a conclusion that one or more claims are unpatentable. For purposes of our analysis under Fintiv, we weigh the merits as being neutral.” slip op. at 22

  Discretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,916,781
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc.Institution denied
  PTAB · Apr 6, 2023 · IPR2022-01455 · APJ Lynne H Browne · IPR · Institution

  Institution was denied for claims 11, 13–16, 19, and 20 because Petitioner did not explain why a skilled artisan would combine Merriman’s alternative embodiments.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner that the Petition relies on two alternative embodiments for its invalidity theory without sufficient explanation of how or why a person of ordinary skill in the art would have combined these embodiments. See Prelim. Resp. 7–12. Merriman discloses a real time embodiment, wherein “the advertiser’s website reports activity in real [wherein] the advertiser’s web site keeps a user log file of visitor activity and reports the user log file back to the advertisement server.” Id. at 3:38– 41. In this latter embodiment, “[r]eporting of user log files may be by email or any other file transfer technique.” Id. at 3:41–42. Merriman further discloses that the real time embodiment uses “spotlight tags placed on specific pages in the advertiser’s web site” to provide feedback of individual user’s activities in real time back to the advertising server 14, whereas the other embodiment provides “data accumulated in a user activity list” via email or a file transfer operation. Ex. 1003, 4:45–48, 4:51–54, Fig. 2. Throughout its specification, Merriman describes these embodiments as mutually exclusive alternatives. See, e.g. Ex. 1003, code (57), 3:35–43, 4:44–5:3, 5:33–54. The Petition, however, “overlooks or ignores Merriman’s clear distinctions and relies on aspects of both alternative embodiments.” Prelim. Resp. 11. Regardless of whether an obviousness argument “is based on combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference,” Petitioner must direct us to “a motivation to make the combination and a reasonable expectation that such a combination would be successful, otherwise a skilled artisan would not arrive at the claimed combination.” In re Stepan, 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). In this case, Petitioner does not make the required showing. See Pet. 26–29 (relying on both of Merriman’s embodiments to meet limitation 11.b,” slip op. at 16

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached

    “F. Discretionary Denial Under 35 U.S.C. § 325(d) As we have determined that Petitioner does not demonstrate a reasonable likelihood of prevailing for any claim on any ground, we need not consider whether application of the Director’s discretionary authority to deny institution in accordance with 35 U.S.C. § 325(d) is appropriate in this proceeding.” slip op. at 18

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’582 patent “would have possessed at least a bachelor’s degree in electrical engineering or computer science, and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 7– 8. (citing Ex. 1002 ¶¶ 30–34). Petitioner asserts further that “[a] person could also have qualified with more formal education and less technical 1 Merriman et al., U.S. Patent No. 8,566,154 B2, issued Oct. 22, 2013 (Ex. 1004) (“Merriman”). 2 Rosenberg et al., U.S. Patent No. 6,073,241, issued June 6, 2000 (Ex. 1005) (“Rosenberg”). definition of the level of skill at this time. Prelim. Resp. 5. For purposes of this Decision, we also 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 5

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,244,582

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.