- PTAB · Sep 5, 2024 · IPR2024-00695 · APJ Norman H Beamer · IPR · Institution
The Board instituted review of claims 1–13 on all grounds, finding compelling evidence of obviousness over Perlman for claims 1 and 12 and a reasonable likelihood of success on the remaining claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The second Fintiv factor strongly favors denial, the third Fintiv factor somewhat favors denial, the first and fifth factors are neutral, and the fourth factor somewhat weighs against denial. Accordingly, we determine that the first five Fintiv factors favor discretionary denial, and thus, we assess compelling merits. CommScope, Paper 23 at 5 (“In circumstances where, however, the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”). We note that the compelling merits standard is met if “the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record. “A challenge can only ‘plainly lead to a conclusion that one or more claims are unpatentable’ [Guidance Memo 5] if it is highly likely that the petitioner would prevail with respect to at least one challenged claim.” OpenSky Indus., LLC v. VLSI Tech. LLC, IPR202101064, Paper 102, 49–50 (PTAB Oct. 4, 2022) (precedential). We have so determined in regard to at least independent claims 1 and 12, and therefore decline to deny institution based on the Fintiv factors.” slip op. at 15
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo 4 (emphasis added). Thus, the standard need only be met as to one claim. In this case, we determine, for the reasons explained below in our analysis of Petitioner’s unpatentability challenges, that the Petition presents a compelling challenge based on a single close reference at least for independent claims 1 and 12. Perlman’s disclosure provides clear and robust teachings for the limitations of those claims. Patent Owner’s only arguments on the merits, directed to two limitations common to both independent claims, are premised on an interpretation of “transmitting . . . data streams independently over a network” that has no basis in the record.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 16 (citing Freedman Decl. ¶¶ 20–22). Patent Owner does not dispute Petitioner’s definition for purposes of its preliminary response. Prelim. Resp. 15. Petitioner’s proposal is consistent with the level of ordinary skill in the art as reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“Based on this record, we determine that the claim requirement at issue requires the parallel encoded data streams to be transmitted such that the encoded tiles arrive at the destination for separate decoding and recombination to reproduce the image. The embodiments described in the ’426 specification describe nothing more. The portions of Perlman on which Petitioner relies amply demonstrate the same behavior. It is not necessary to determine the precise method by which the separately encoded data tiles are transmitted, as long as they are separately received, decoded, and recombined at their destination. Patent Owner’s example illustrates this: whether four people travel from Dallas to Washington, D.C. in one, two, three or four cars does not change the fact that each person retains their individual identity during the journey, just like the encoded tiles of Perlman during transmission. Whatever additional, unexplained requirements Patent Owner would attach to the term “independently” in this context has no reasonable basis.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,649,426 - PTAB · Sep 3, 2024 · IPR2024-00446 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claims 1, 14, and 18 are obvious over Rabenko and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “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.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). At this early stage in the proceeding, we find that nothing in the language of the independent claims explicitly requires a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. Additionally, we do not find any definition or disclaimer (explicit or implicit) in the intrinsic record to limit the independent claims a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. See Trustees of Columbia University v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this preliminary stage, we find that the evidence of record supports Petitioner’s position that limitation [18D] is taught by the combined teachings of Rabenko and Kim and Petitioner has provided sufficient reasoning to combine those teachings. We find that Patent Owner’s arguments (Prelim. Resp. 32–56) and Dr. Russ’s testimony (Ex. 2003 ¶¶ 91– 131) do not undermine Petitioner’s showing. Accordingly, we determine Petitioner has shown sufficiently for the purpose of institution that Rabenko and Kim teaches limitation [18D] of claim 18.” slip op. at 33
- Parallel petitionsDenied
“40 asserted grounds are voluminous and excessive. Prelim. Resp. 7, 56–58 (citing Adaptics Ltd. v. Perfect Company, IPR2018-01596, Paper 20, 18 (Mar. 6, 2019) (informative) (“Adaptics”); Uber Technologies, Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (Oct. 23, 2023); Energysource Minerals, LLC, v. Terralithium LLC, IPR2019-01607, Paper 10, 13 (May 4, 2020) (similar)); see also Prelim. Resp. 4. In particular, Patent Owner argues the Petition asserts “at a minimum 40 separate grounds (grounds ‘A’ through ‘NN’), involving eight separate references, challenging claims 1– 20” and “[t]his ‘voluminous and excessive’ number of grounds is an independently sufficient reason to deny institution.” Id. (citing Adaptics, 18). Petitioner challenges claims 1–20. Pet. 9. Fourteen claims, specifically claims 1–7, 10, 12, 14, 15, and 18–20, are challenged on the basis of four grounds, specifically Grounds A–D. Id. Petitioner relies on Lu for teaching a RISC processor recited in claims 1 and 14. Id. at 43–45. Petitioner submits one or two additional references for dependent claims 8, 9, 11–13, 16, and 17. Id. at 10. In view of the above, as well as the complexity of the technology and detailed nature of certain of Petitioner’s arguments, we decline to exercise discretion and deny institution on the basis of the number of grounds asserted.” slip op. at 42
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,223,775 - PTAB · Aug 20, 2024 · IPR2024-00442 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–18 and all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (a “POSITA”) at the time of the alleged invention would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems. Additional education may substitute for professional experience and significant work experience may substitute for formal education. Pet. 24 (citing Ex. 1002 ¶¶ 44–46). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for petitioner
“As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The word “means” does not appear in the claims of the ’826 patent. When this is the case, there is a presumption that the claims do not recite means-plus-function limitations under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Since neither party offers any argument or evidence to contravene this presumption, we do not construe any claim term as means-plus-function in rendering our decision.” slip op. at 12
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,825,826 - PTAB · Jul 24, 2024 · IPR2024-00465 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–24 on all petition grounds, finding a reasonable likelihood that Irwin renders at least one challenged claim obvious.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“We disagree. First, we agree with Patent Owner that the fact pattern presented here is not the typical situation in which the factors from General Plastic are considered. In particular, this proceeding challenges claims of a different patent than the patents at issue in PGR2020-00084 and IPR2023- 01235. Challenging claims of different patents significantly distinguishes the facts here from those in General Plastic, and we decline Patent Owner’s invitation to extend General Plastic in this regard. Accordingly, we do not exercise our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Even assuming Linq3 is a real party in interest to Petitioner and assuming we may exercise our discretion to deny institution based on unclean hands (see Kavo Dental Techs, LLC v. Osseo Imaging, Inc., IPR2020-00659, Paper 10 at 19 (PTAB June 10, 2020)), Patent Owner essentially asks us to resolve multiple factual issues related to its contract dispute with Linq3 to justify denial of institution. See, e.g., Prelim. Resp. 1– 26. Many, if not all, of these issues appear to be involved in the contract dispute, which will be resolved by the Arizona state court. We are not in a good position to make determinations about these particular issues at this stage of the proceeding, on the limited record before us. Rather, we find that the state court is better suited to address the conduct of Linq3 of which Patent Owner complains. Accordingly, we leave these matters for the state court. To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party in interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response, and the parties may brief and argue the issue during trial.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, Petitioner has established a reasonable likelihood that it would prevail in showing that Irwin would have rendered the subject matter of claims 1–9 and 11–24 of the ’451 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,488,451 - PTAB · Jul 22, 2024 · IPR2024-00374 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–10 and all asserted grounds because the petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“petition for inter partes review. Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). In determining whether to exercise that discretion on behalf of the Director, the Board considers an early trial date in related litigation, among other factors, as part of an assessment of all relevant circumstances of the case—including the merits—to balance considerations such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“(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 a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“engineering, electrical engineering, or a related field, and (2) at least two years of industry experience in digital video processing, or a related field.” Pet. 3 (citing Ex. 10035 ¶¶ 76–78). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 21. We also apply Petitioner’s proposed skill level in this Decision. Pet. 3.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,090,025 - PTAB · Jul 18, 2024 · IPR2024-00327 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Demircin renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’303 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“III. DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 33– 39 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.8 Pet. 76 (citing Ex. 1029). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“3. Preliminary Analysis Regarding Claim 1 At this stage, we are persuaded by Petitioner’s contentions that the teachings of Demircin satisfy each limitation of claim 1. On the current record, we do not agree with Patent Owner’s arguments that Demircin does not satisfy the parties’ agreed construction. As cited by Petitioner (see, e.g., Pet. 33, 43), Demircin teaches that when additional bandwidth becomes available, NAL units that were previously discarded or only partially transmitted may be transmitted in a delayed manner (Ex. 1005 ¶¶ 34, 104– 128, Fig. 13, 14). We are currently persuaded that Demircin teaches or reasonably suggests that such delayed NAL units could be received out of order and would be rearranged, as claimed.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,986,303 - PTAB · Jul 18, 2024 · IPR2024-00372 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 2–4 and 11 on all petition grounds, finding a reasonable likelihood that Samsung would show them unpatentable as obvious over Phek, Segall, Martins, and He.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“such as system efficiency, fairness, and patent quality. Fintiv, Paper 11 at 5. When the same prior art is submitted in district court and to the Board, there are “concerns of inefficiency and the possibility of conflicting decisions.” Id. at 12. Petitioner can mitigate those concerns by presenting a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the Board. Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Here, Petitioner has presented such a stipulation: if the Board grants institution, Petitioner “agrees not to pursue any grounds raised in the petition, or any grounds [Petitioner] could have reasonably raised in the petition, in [the] district court litigation or any parallel proceeding” Ex. 1028, 1. “Consistent with [Sotera], 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.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022).5 Thus, we decline to exercise our discretion to deny the Petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“present arguments specifically directed to the subject matter recited in the rest of the claim. See Prelim. Resp. Even so, Petitioner has the burden to show that the challenged claims are unpatentable. Thus, we have reviewed Petitioner’s arguments and evidence submitted in connection with the remaining limitations and find them to be sufficient at this stage and on this record. From the current record, Petitioner has established a reasonable likelihood that it will prevail in demonstrating that claim 2 is unpatentable.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“digital video processing, or a related field.” Pet. 3–4 (citing Ex. 10036 ¶¶ 123–125). Petitioner also asserts that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Id. at 4. Patent Owner uses the same skill level in its Preliminary Response. Prelim. Resp. 13. We also apply Petitioner’s proposed skill level in this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Patent Owner’s arguments, however, are based on an implicit construction for the second resolution converter. See § II.D.5.c supra. For the reasons discussed below, we disagree with Patent Owner’s arguments and the implicit construction. See id. Apart from rejecting the implicit construction of the second resolution converter, we agree with the parties that no claim term needs to be construed in this Decision.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,218,995 - PTAB · Jul 9, 2024 · IPR2024-00120 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 11, and 26–34 on all asserted grounds, finding a reasonable likelihood of prevailing on the § 103 challenges.
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 arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“2 While the ’230 patent is currently involved in a parallel district-court case, Petitioner argues that “[i]nstitution is appropriate under Fintiv . . . .” Pet. 157. Petitioner also states that “if this proceeding is instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Id. Patent Owner does not challenge Petitioner’s argument. Accordingly, and in view of Petitioner’s stipulation, it is not necessary to reach Petitioner’s discretionary denial arguments. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to section II.A)).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree (B.S.) in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 7 (citing Ex. 1004 ¶¶ 5–17, 79–84). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’230 patent specification and 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 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,191,230 - PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
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 arguments 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 least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition and any response “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.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We interpret the challenged claims using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. 8 The present record does not include any objective evidence of nonobviousness. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413
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.