- PTAB · Jun 11, 2024 · IPR2024-00248 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 19–23 on all asserted grounds, finding a reasonable likelihood that claim 19 would be unpatentable as obvious over Neibauer, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“obvious over Neibauer, Cheng, and Squibbs. Pet. 3, 12–48. Based on the current record, we are sufficiently persuaded that Petitioner has established a reasonable likelihood of prevailing on this asserted obviousness ground with respect to at least claim 19.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on the current record, it would have been obvious to a person having ordinary skill in the art to use the features of the Yahoo! club (information channels) with a mobile device, thus sending the photo “from a mobile device” and “permitting interaction between a user of the mobile device and one or more additional users,” as recited in claim 19. See Ex. 1002 ¶ 91. A person having ordinary skill in the art would have known that a person could use a conventional computer, such as a laptop computer, to run a web browser to visit pages on the internet, such as Yahoo!, including Yahoo! Clubs. Id. Because the ’039 patent describes a laptop computer as a “mobile device,” (Ex. 1001, 4:24–32), submitting a photo to a Yahoo! club from a laptop computer results in the receipt of the photo from a mobile device, as recited in claim 19.” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,032,039 - PTAB · Jun 11, 2024 · IPR2024-00247 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that claim 1 would be unpatentable as obvious over Neibauer, Miller, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that Miller was not considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶96.) Pet. 18–19 (emphasis added).11 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Neibauer, Miller, Cheng, and Squibbs. 6. Analysis of Claims 2–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’801 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 32
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“Based on the current record, the combination of Neibauer and Miller teaches “control[ling] activation of a mobile information channel,” as recited in claim 1. As discussed above, the first user can create a Yahoo! Club by supplying the necessary information and selecting “Yes! I accept.” Neibauer is silent on whether the user can select which specific mobile information channels are associated with the Yahoo! Club. However, Miller teaches a similar collaborative web-based system in which the group’s creator can use an interface to choose specific communication pathways to allow: FIG. 16 shows one possible user interface for selecting communication tools to be made available to group members. This screen can be presented to the user creating the environment after the group has been identified and its members selected. It is contemplated that a variety of communication tools can be provided, including a bulletin board service; advertisements; white pages (e.g., a listing of members, their e-mail addresses, telephone numbers, and the like); yellow pages (e.g., a listing of promotional and contact information); document security (e.g., shared access secure document storage services); anonymous e-mail (described above with respect to the first embodiment); threaded dialogs; a group newsletter creation tool; videoconferencing; and even other user-provided applications that can be specified by name an location (e.g., URL). Ex. 1004, 47:31–48:10 (emphasis added); see also id. at 42:29–32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”); Ex. 1002 ¶ 96. The combination of Miller’s teaching of selecting different methods of communication with Neibauer’s teaching of Yahoo! Clubs would allow the founder to select specific mobile information channels for the group to use. See Ex. 1002 ¶¶ 95–100. Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 97–100. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 99. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 100. Accordingly, the combination of Neibauer and Miller teaches” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’801 patent.8” slip op. at 9
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,825,801 - PTAB · Jun 11, 2024 · IPR2024-00246 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1, 6–11, 13–18, and 20–27, finding a reasonable likelihood that claim 1 is obvious over Neibauer, Miller, and Cheng.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Dr. Madisetti argues that a person having ordinary skill in the art would have had “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 6 (citing Ex. 1002 ¶¶ 14–18). At this stage of the proceeding, Patent Owner “applies Petitioner’s characterization of a [person having ordinary skill in the art].” Prelim. Resp. 19 (citing Ex. 2001 ¶¶ 42–44). For purposes of this Decision, we adopt Petitioner’s formulation of a person having ordinary skill in the art, which is consistent with the invention claimed in the ’336 patent.10” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 28–29, 65. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required,” and further agrees “that the ordinary and customary meanings of the claim terms apply.” Prelim. Resp. 19. For the purposes of this Decision, we need not expressly construe any claim terms.11 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“considered by the Office. See Prelim. Resp. 6–13; Ex. 1001, code (56). Further, we do not agree with Patent Owner that Miller is substantially the same as Agboatwalla. Specifically, Petitioner relies on Miller for being able to select different types of communication tools for a group: Miller discloses a number of web-based forms that allow the user to (among other things) specify a name and description for the environment (Fig. 13B) identify the members of the environment (Fig. 13C, 14A-C), and select the various communication features (e.g. bulletin board, etc.) that will be available for members (Fig. 16). (Miller, 0045:12-0046:27.) With respect to the selection of communications features, Miller discloses a user interface for allowing the user to select (from a list) the particular features that will be included in the collaborative environment. (Miller, Fig. 16, 0047:31-0048:9, 0042:29-32 (“The group creator selects from among these functions, preferably by way of an easy-to-use web browser interface, and these choices are stored in a database and associated with the group members.”).) These selections are then used in creating the environment or group. (Miller, 0043:3-6 (“In step 1104, the environment is created… to permit the group members to activate the functions selected for the group.”); EX1002, ¶104.) Pet. 19 (emphasis added).13 We have reviewed the section of Agboatwalla to which Patent Owner directs us (Ex. 2003, 2:32–50) and do not see substantially the same functionality. Although Agboatwalla describes a user being able to select what content may be viewed (see id.), Patent Owner does not direct us to, and we do not see, Miller’s teaching of selecting different types of communication pathways that may be selected for a group. Accordingly, Miller is not substantially the same as Agboatwalla. 13 References to Miller are to Petitioner’s pagination in the exhibit, for consistency with the Petition. Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person having ordinary skill in the art would have combined those teachings in the manner described above. See Ex. 1002 ¶¶ 105–108. Specifically, a person having ordinary skill in the art would have combined Miller’s ability to select communication channels with Neibauer’s Yahoo! Club in order “to enhance the flexibility and customizability of clubs in Neibauer.” Id. ¶ 107. This would allow the founder to eliminate certain features that “may not have been particularly useful or desirable for some clubs.” Id. Additionally, a person having ordinary skill in the art would have had a reasonable expectation of success. See id. ¶ 108.” slip op. at 26
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,793,336 - PTAB · Mar 26, 2024 · IPR2023-01424 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1–16 and 18–20, finding a reasonable likelihood of prevailing on the asserted grounds, including anticipation by Ueda and obviousness over Plante and Cho.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any argument not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at 1 Petitioner identifies itself as the real party in interest. Pet. 1. In addition, Petitioner notes that Spectrum Holdco LLC is its parent company and that Spectrum Holdco LLC and Spectrum Intermediate LLC “have a financial interest in, or could be substantially affected by the outcome of, this proceeding.” Id. 2 Patent Owner identifies itself as the real party in interest and notes that it is a wholly owned subsidiary of OraSure Technologies, Inc. Paper 4, 2. least one claim. We hereby institute an inter partes review as to claims 1–16 and 18–20 of the ’632 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We decline to exercise our discretion here. As pointed out by Petitioner, the same or substantially the same art or arguments were not previously presented with respect to the ’632 patent. Pet. 123–24. Petitioner challenges the ’632 patent on grounds that were not asserted against the ’646 patent, namely the grounds based on Ueda. Id. at 71–123. In addition, we found Petitioner’s arguments based on Plante sufficiently persuasive and determined that the challenged ’646 patent claims are unpatentable. IPR2022-01347, Paper 43 (Feb. 7, 2024). For these reasons, we do not exercise our discretion to deny institution.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(POSITA) “would have had at least a bachelor’s degree in mechanical engineering, biomedical engineering, or similar technical degree and at least 3 years of experience in the medical device industry, including experience with containers and valves used in disposable medical devices.” Pet. 8 (citing Ex. 1002 ¶¶ 51–52). Petitioner further asserts that such a person would have collaborated with a team member with training and experience in the biological aspects of the invention and education and experience relating to the collection of biological samples. Id. (citing Ex. 1002 ¶¶ 51– 52). Patent Owner does not offer an alternative definition of a person of ordinary skill in the art at this time. See generally Prelim. Resp. Accordingly, for the purposes of this Decision, we adopt Petitioner’s proposal regarding the level of one of ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary for us to construe “biological sample” or “annular valve” at this stage of the proceeding because neither party contends that construing either term is material to deciding whether to institute a trial on the asserted grounds in the Petition. See Nidec Motor Corp. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,536,632 - Apple Inc. v. Ald Social LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01399 · APJ Phillip A Bennett · IPR · Institution
The Board instituted IPR of claims 1–16 on all asserted grounds, finding a reasonable likelihood that Wolfe renders claim 1 obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review is under 35 U.S.C. § 314. See also 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, the information presented in the Petition must show “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The asserted prior art, like the challenged patent, presents high-level schematics and functional descriptions of various system components used in monitoring events and crowd behavior using location-based services. These system components largely include servers, websites, and mobile telephones utilizing wireless technologies, such as Wi-Fi, cellular, and global positioning system (GPS) to communicate and generate location data regarding mobile devices, as well as the use of databases to store historical information related to location-based services. The prior art and the patent provide description of monitoring crowd behavior by tracking the location of groups of mobile devices. Neither the challenged patent nor the asserted” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“we agree with Petitioner that “[t]he specification does not provide any explicit definition.” Pet. 14. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:45–48. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:14–16; Pet. 14 (citing Ex. 1001, 5:16–20). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:15–20, 5:31–35, 5:41–42 (“to assess the number . . . of wireless devices”), 5:55–57; see Pet. 15 (citing Ex. 1001, 5:31–36, 5:51–57). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“institution. On this preliminary record, Petitioner has sufficiently shown that responsive to the network monitor observing a significant aggregation of devices in a particular area, application 322 functions as a crowd risk determinant because the application 322 assesses the needs arising from the aggregation of devices in that area. Ex. 1004, ¶¶ 46. Additionally, although the example provided in Wolfe relates to determining the number of pizza slices needed based on how many devices are in particular location, on this preliminary record, we agree with Petitioner that a person of ordinary skill in the art would have found it obvious to implement a similar risk analysis to determine that police patrols would be needed in a particular area, as taught by Wolfe, based on the determination of crowd’s location, activity, and movement. Id. at 14.” slip op. at 25
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,402,158 - Apple Inc. v. Ald Social, LLCInstitutedPTAB · Mar 18, 2024 · IPR2023-01398 · APJ Barbara A Benoit · IPR · Institution
The Board instituted inter partes review of claims 1–14 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been obvious over Wolfe and Pfeffer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS A. Legal Standards Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information in the Petition shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. See 35 U.S.C. § 314(a).” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on declaration testimony from Dr. Guy (Ex. 1003), Petitioner asserts that a person of ordinary skill in the art “would have been someone knowledgeable and familiar with the field of crowd analysis and location-based computing” and would have had “at least a bachelor’s degree in computer science/computer engineering, or equivalent training, and approximately two years of experience working in the field of crowd analysis and location-based computing.” Pet. 12 (citing Ex. 1003 ¶¶ 19–21). Petitioner further notes that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. For purposes of this Institution Decision, we adopt the assessment offered by Petitioner as it is consistent with the challenged patent and the asserted prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“agree with Petitioner that “[t]he specification does not provide any explicit definition” for “indication of a viral event.” Pet. 13. The written description, however, indicates “[a] viral event is defined as occurring when one or more predefined parameter thresholds have been surpassed, as determined in the exemplary embodiment in the Network Monitor 302.” Ex. 1001, 4:40–43. As Petitioner notes, the written description also provides examples of predefined parameter thresholds used by Network Monitor 302 “to determine if the monitored network indicates that a viral event may be occurring or impending.” Ex. 1001, 5:9–12; Pet. 13–14 (citing Ex. 1001, 5:9–15). Examples of predefined parameter thresholds include an excessive number of wireless devices in an area, excessive use of wireless devices in an area, two highly dense clusters of wireless devices converging at a significant rate of speed, and the difference in the number of wireless devices in an area exceeds a threshold over consecutive time periods. Ex. 1001, 5:12–14, 5:27–31, 5:35 (“to assess the number . . . of wireless devices”), 5:48–51; see Pet. 14 (citing Ex. 1001, 5:26–31, 5:45–51). As such, the written description describes parameter thresholds related to number, use, and movement of wireless devices being used to determine whether a viral event may be occurring.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“4. The Combination of Wolfe and Pfeffer To demonstrate obviousness, Petitioner must provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR, 550 U.S. at 418. More specifically, to prevail, Petitioner must demonstrate by a preponderance of evidence that “a skilled artisan would have had reason to combine the teaching of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success from doing so.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1193 (Fed. Cir. 2014). Regarding the required articulate reasoning, Petitioner contends that “[a]lthough Wolfe teaches providing relevant crowd information to police, Wolfe does not provide the details for how to alert and notify the police.” Pet. 24 (citing Ex. 1004 ¶ 14). “Pfeffer, however, fills in Wolfe’s details by specifically teaching techniques for receiving information about crowds, evaluating the information, and alerting first responders when needed,” according to Petitioner. Pet. 24 (citing Ex. 1005, Abstract, ¶¶ 6, 40–41). Petitioner also contends that the combination would provide additional benefits to Wolfe’s system from Pfeffer’s additional features, such as providing “continuous updates to the incident scenario model saved for future use, recommendations for the most effective methods to respond to the incident based on past responses and current trends, and determining if an incident should be elevated based on the number of people involved in the incident.” Pet. 26 (citing Ex. 1003 ¶ 77; Ex. 1005 ¶¶ 28, 77, 85). Regarding the required expectation of success, Petitioner contends that “[a] POSITA would have found the combination of Wolfe and Pfeffer predictable” because they are similar in that “both systems analyze crowd information to identify safety risks.” Pet. 25 (citing Ex. 1003 ¶ 75; Ex. 1004, Abstract, ¶¶ 11, 14; Ex. 1005 ¶ 28). Petitioner further asserts that “[a] POSITA would have had a reasonable expectation of success when combining Wolfe and Pfeffer because [they] are implemented in the same manner,” with both being implemented on servers and with Pfeffer indicating that its techniques could be “any combination of software and/or hardware that is configured to perform one or more tasks.” Pet. 25–26 (citing Ex. 1003 ¶ 78; Ex. 1004 ¶ 70, 74; Ex. 1005 ¶¶ 37, 32). Petitioner also contends “the combination would use known techniques (Pfeffer’s implementation details of an incident response method) to improve a similar system (Wolfe’s crowd detection and incident response system) in the same way (providing crowd details and incident information to first responders so that they may better respond to comprised crowd safety).” Pet. 26–27 (citing Ex. 1003 ¶¶ 77–79). Petitioner’s showing (Pet. 23–27) of articulated reasoning to support” slip op. at 23
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,198,054 - PTAB · Mar 13, 2024 · IPR2023-01206 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–23 based on three obviousness challenges involving Fugitt and the listed papermaking references.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We agree with Patent Owner that Papermaking is cumulative to Mohan. Petitioner relies on Papermaking to teach claim 1’s recitation that “a contact surface of said thermo-roller is heated to an elevated temperature of at least 250°F.” Pet. 32–34. Mohan discloses hot hard calendering of paper and paperboard to improve smoothness, where calender rolls have “a roll surface temperature of 250–400°F. during calendering of the web.” Ex. 2002, 1:7–10, 4:46–57.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 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 . . . 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). Institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons discussed below, the facts do not warrant exercise of discretion to deny institution, and the reasonable likelihood standard is met. We, therefore, grant institution of an inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“Patent Owner is correct that the ’142 Patent does not mention heating a counter-roller of a hot-hard calender, and the surface temperature of the counter-roller is not discussed. Prelim. Resp. 12. But nowhere does the ’142 Patent suggest that the counter-roller should not be heated to an elevated temperature. Under the applicable legal standard, the’142 Patent’s silence about whether the counter-roller is heated is not enough to justify reading a negative limitation into the claim. “negative limitation.” Ethicon LLC v. Intuitive Surgical, Inc., 847 Fed. App’x 901, 907 (Fed. Cir. Mar. 15, 2021). “[S]uch exclusions must find support either in ‘the words of the claim’ or through an ‘express disclaimer or independent lexicography in the written description that would justify adding that negative limitation.’” Id. (citing Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed. Cir. 2003); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366–67 (Fed. Cir. 2002)). “The standards for finding lexicography and disavowal are exacting.” GE Lighting Sols., LLC v. AgiLight, Inc., 750 F.3d 1304, 1309 (Fed. Cir. 2014). “To act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an intent to define the term.’” Id. (citing Thorner, 669 F.3d at 1365). Similarly, disclaimer or disavowal requires that the specification or prosecution history demonstrate that the invention does not include a particular feature. Id. Here, Patent Owner does not point to any claim language, lexicography, or disclaimer in the ’142 Patent or its file history that would support defining a “hot-hard calender” as requiring that only one of the two rollers be heated to an elevated temperature.” slip op. at 20
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“As we understand it, one theory of obviousness advanced by Petitioner is combining Fugitt’s teaching that “[t]he rolls of the calender may be steam heated” with Papermaking’s teaching about the surface temperature that can be obtained when using steam to heat the rolls. Pet. 32–33; temperature of Fugitt’s steam-heated rollers in order to achieve a contact surface temperature of at least 250°F, as recited in claim 1. Instead, we understand Petitioner to be relying on Papermaking to teach the temperature of the unmodified rollers of Fugitt. Under this theory, it was not necessary for Petitioner to show that the paperboard substrate properties disclosed in Fugitt would still be achieved after increasing the temperature. Nevertheless, the Petition also relies on Papermaking’s teaching of temperatures that exceed the upper limit for steam-heated rolls, e.g., “[h]igh thermo roll temperatures (in some cases over 200°C [392°F]” or oil-heated rollers having surface that “can reach over 220°C [428°F].” Pet. 33 (citing Ex. 1005, 82; Ex. 1010, 98). Patent Owner is correct that Petitioner relies on Fugitt’s disclosure of paperboard properties (smoothness and basis weight Y2 as a function of caliper thickness) obtained without modifying the roller surface temperature. Pet. 35–36; Prelim. Resp. 44. There is a factual issue as to whether a person of ordinary skill in the art would have expected to achieve the paperboard properties disclosed in Fugitt and recited in claim 1, if the roller temperature were increased above the level achievable by steamheated rolls. There is also a factual issue as to whether Patent Owner’s evidence of increased energy cost would outweigh Petitioner’s asserted benefits of increased temperature. These issues are best resolved after the parties have had to the opportunity to develop the record and cross-examine the opposing experts. See Arctic Cat Inc. v. Polaris Indus., Inc., 795 F. App’x 827, 833 (Fed. Cir. 2019) (“The Board must weigh the benefits and drawbacks of the modification against each other, to determine whether there would be a motivation to combine.”).” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,293,142 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Feb 23, 2024 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 5–14 on all four asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
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 the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art, as of the earliest possible priority date for the ’641 patent, “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. Patent Owner does not dispute Petitioner’s definition, “except noting that other majors may provide equivalent education and experience designing, testing, and building lithium-ion batteries.” Prelim. Resp. 14. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art for purposes of this Decision. The parties may further address at trial whether “other majors” should be added to this definition, and whether such a modification would have any impact on the unpatentability analysis in this case.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party contends any terms of the ’641 patent require express construction. Pet. 4–5; Prelim. Resp. 13–14. And, for purposes of this decision, we agree that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“This argument is not persuasive. Contrary to Patent Owner’s arguments, the Federal Circuit has held that “generic” reasons to combine are not inherently suspect, and may reasonably include a desire to make a device “stronger, cheaper, cleaner, faster, lighter, smaller, more durable or more efficient.” See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)). Regardless, Petitioner’s asserted reasons to combine are specific (improved safety and less deterioration after repeated charging and discharging cycles), as is the proposed combination (implementing Sakamoto’s range of ratios for the positive and negative electrode materials in Yamaki’s lithium ion battery). Pet. 9–12. Identification of specific benefits that are tied to specific elements of specific prior art references is sufficient to support an obviousness ground. See Intel, 21 F.4th at 797.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Jul 13, 2023 · IPR2023-00374 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 2, and 7–10 on all asserted obviousness grounds based on Nixon, Nixon and Assadi, Badihi, and Badihi and Assadi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 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 the Director determines . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“and integrity of the system are best served by denying or instituting review. Fintiv, Paper 11 at 6. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),5 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3 (emphasis omitted); see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes the stipulation provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A).” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Decided for patent owner
“To define specific terms used to describe an invention, an inventor must do so “with reasonable clarity, deliberateness, and precision” and must “‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–88 (Fed. Cir. 1992)). As Patent Owner notes, the ’965 patent states that “[t]he term ‘effectively exposed’ is used herein to indicate that the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Ex. 1001, 6:48–51; Prelim. Resp. 9– 10. This language suggests that some electron flow in response to light is necessary for a region to be “effectively exposed.” But, as Petitioner notes, Pet. 31 n.5, the ’965 patent also says that” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Given the ambiguity in the present record, we do not agree with Patent Owner that the ’965 patent defines “effectively exposed” sufficiently clearly and precisely that we can conclude that it means “the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Instead, on the present record, we synthesize the different uses of the term within the Specification to arrive at a preliminary conclusion that the term means “having a semiconductor substrate that is thin enough to be transparent to visible light, thereby rendering the pixels of the light sensitive pixel regions capable of generating electron flow in response to light (photons) passing through the substrate.” For purposes of this decision, we adopt this construction of the term “effectively exposed,” but we encourage both parties to address the construction of this term during trial. After considering the arguments and information presented in the Petition and Preliminary Response, we determine that we do not need to expressly construe any additional terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,168,965 - PTAB · Jul 13, 2023 · IPR2023-00372 · APJ Kristina M Kalan · IPR · Institution
The Board instituted inter partes review on all asserted § 103 grounds challenging claims 1–6, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“to deny institution where a petitioner “stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure at 7. Here, Petitioner’s stipulation uses this language but is further limited “to the patent claim subject to the instituted IPR.” Pet. 87. We agree with Patent Owner that this stipulation is “narrower” than the stipulation “that was considered by the Board in Sotera,” because it adds further limiting language to the model Sotera stipulation. Prelim. Resp. 13. Accordingly, we do not find that this stipulation implicates the Interim Procedure’s prohibition against discretionary denial where a Sotera-type stipulation is presented. We do not agree with Patent Owner that the stipulation must be filed in district court. All the Interim Procedure requires is that Petitioner “stipulate[]” or “present[] a stipulation,” not that the stipulation be filed in district court. Interim Procedure at 3, 7. Accordingly, we do not discount Petitioner’s stipulation because Petitioner failed to file it in district court. Thus, although Petitioner’s stipulation does not track the language of the model Sotera stipulation, it does minimize the possibility of overlapping issues between the parallel proceeding and this proceeding, in which all claims of the ’319 patent are challenged in the Petition. Accordingly, the fourth factor weighs against discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’319 patent, and we institute inter partes review on all challenges raised in the Petition. 37 C.F.R. § 42.108 (2022).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“‘set out his uncommon definition in some manner within the patent disclosure’ so as to give one of ordinary skill in the art notice of the change” in meaning. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387–1388 (Fed. Cir. 1992)). As Patent Owner notes, the ’319 patent states that the “term ‘effectively exposed’ is used herein to indicate that the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Ex. 1001, 6:52–55; Prelim. Resp. 10–11. This language suggests that some electron flow in response to light is necessary for a region to be “effectively exposed.” But, as Petitioner notes (Pet. 32 n.3), the ’319 patent also says that [t]he exposed backside surface of the semiconductor substrate is then subjected to the material erosion process . . . to thin the semiconductor substrate until the semiconductor substrate is transparent to visible light, thereby effectively exposing the light-sensitive pixel diffusion regions of the image sensor circuit through the backside surface. Ex. 1001, 4:63–5:4. This suggests that merely the transparency of the overlying structure to visible light is sufficient for the underlying structure to be “effectively exposed.” Given the ambiguity in the present record, we do not agree with Patent Owner that the ’319 patent defines “effectively exposed” sufficiently clearly and precisely that we can conclude that it means “the pixel of each light-sensitive pixel region generates electron flow in response to light (photons) passing through [the] second surface.” Instead, on the present record, we synthesize the different uses of the term within the specification to arrive at a preliminary conclusion that the term means “having a semiconductor substrate that is thin enough to be transparent to visible light, thereby rendering the pixels of the light sensitive pixel regions capable of generating electron flow in response to light (photons) passing through the substrate.” For purposes of this decision, we adopt this construction of the term “effectively exposed,” but we encourage both parties to address the construction of this term during trial. slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We determine we need not expressly construe any other claim term at this stage of the proceeding. See Realtime Data, 912 F.3d at 1375.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,169,319
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.