• Nokia Of America Corporation v. Alexander Soto And Walter SotoInstitution denied
  PTAB · Nov 3, 2023 · IPR2023-00680 · APJ Thu A Dang · IPR · Institution

  The Board denied institution for all challenged claims under § 325(d), finding substantially the same art and arguments had been presented to the Office and no material Office error was shown.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied

    “5. 35 U.S.C. § 325(d) Conclusion We conclude that (1) substantially the same art was previously presented to the Office, and (2) Petitioner has not demonstrated that the Office erred. We therefore conclude that it is appropriate to exercise discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 28

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “III. CONCLUSION After considering the evidence and arguments presented in the Petition and Preliminary Response, we determine that, for each of Petitioner’s challenges, it is appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition with respect to those grounds. We accordingly exercise that discretion for the Petition as a whole and deny institution of an inter partes review.3 IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 29

  Discretionary denial
  Patents in suitUS 9,887,795
• Nearmap US, Inc. v. Pictometry International Corp.No claims unpatentable
  PTAB · Oct 30, 2023 · IPR2022-00735 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–16 were not shown unpatentable because the Snavely-based combinations did not teach a “primary oblique image” as construed.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner

    “Patent Owner’s construction of the term “primary oblique image” as “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” This construction is supported by the ’518 patent Specification, which includes a listing of “Terminology” that contains the following definition for the term “primary oblique image”: Primary oblique image—a displayed oblique image that can be considered ‘in front of’ the other displayed images. The primary oblique image can also be a master image. Ex. 1001, 6:25:31–34.” slip op. at 18

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

    “Based on the full trial record, we find that Petitioner has not sufficiently shown that the proposed combination includes a “primary oblique image” as properly construed. As discussed above, we construe the term “primary oblique image” to require “a displayed oblique image that can be considered ‘in front of’ the other displayed images.” See supra § II.A.1(b). In its papers, Petitioner does not demonstrate that Snavely discloses a “primary oblique image” that can be considered “in front of” the other displayed images. To the contrary, we agree with and find credible Dr. Bajaj’s testimony that the “main view” of Snavely’s Figure 5, which Petitioner points to as the “primary oblique image,” is “behind the other displayed images in overlay panes,” such as the information pane, thumbnail pane, and map pane, and “therefore, necessarily cannot be considered ‘in front of’ the other displayed images.” Ex. 2007 ¶ 60; see Ex. 1004, Fig. 5; PO Resp. 26. Our conclusion is also supported by the fact that Snavely refers to the information, map, and thumbnail panes as “overlay panes.” Ex. 1004, 5 (“The components of this window are the main view, which fills the window, and three overlay panes: an information and search pane on the left, a thumbnail pane along the bottom, and a map pane in the upper-right corner.”). We agree with and find credible Dr. Bajaj’s testimony that Snavely’s description of these panes as “overlay” panes confirms that “the main view image is behind the images shown in the map pane, the information pane, and the thumbnail pane.” Ex. 2007 ¶ 61 (citing Ex. 1004, 5). Additional support is found in Dr. Forsyth’s deposition testimony, where he explained that one of ordinary skill would have understood “overlay panes” to be “on top of” a main display:” slip op. at 38

  • ExcludeMotion to exclude, deniedDenied

    “E. Patent Owner’s Motion to Strike and Motion to Exclude Patent Owner filed a Motion to Strike certain portions of the Third Munford Declaration (Exhibit 1020) and its Appendices, which Petitioner submitted to show that Snavely and Irani were publicly accessible before the critical date of the ’518 patent. Paper 30. Patent Owner also filed a Motion to Exclude certain Appendices of the Second Munford Declaration (Exhibit 1016) and Third Munford Declaration, which Petitioner also submitted to show public accessibility of Snavely and Irani. Paper 35. Because, as discussed above, we find that Petitioner has not proven by a preponderance of the evidence that the challenged claims would have been obvious over Snavely, Balfour, Irani, and Yelton, we need not reach whether Petitioner has sufficiently shown that Snavely and Irani were publicly accessible before the critical date. We, therefore, deny Patent Owner’s Motion to Strike and Motion to Exclude as moot.” slip op. at 40

  Patent outcomesUS 8,593,518 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,593,518
• Universal Electronics, Inc. / Gemstar Technology (Qinzhou) Co. Ltd. et al. v. ROKU, Inc.Some claims unpatentable
  PTAB · Oct 23, 2023 · IPR2022-00818 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–5, 8–10, and 14 are unpatentable over RadioShack; claim 11 was not shown unpatentable over Wouters and Verzulli because the combination did not disclose the claimed combining and installing steps.

  RulingsFinal written decision

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner

    “disseminated to the interested public, ‘public accessibility’ has been called the touch-stone in determining whether a reference constitutes a ‘printed publication’ . . . .” Jazz Pharm., Inc. v. Amneal Pharm., LLC, 895 F.3d 1347, 1356 (Fed. Cir. 2018) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir. 1986)). A reference is considered “publicly accessible” if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it.” Id. at 1355–56 (citing In re Wyer, 655 F.2d 221, 226 (CCPA 1981)). Petitioner treats this requirement as having two aspects, namely (1) whether a person of ordinary skill could reasonably have found RemoteCentral.com and (2) whether such a skilled artisan could reasonably have found RadioShack on RemoteCentral.com. Reply 8–13; see also Tr. 33:25–34:8 (Patent Owner asserting that there are two aspects to the analysis on public accessibility: “The first is whether a [person of ordinary skill in the art] would have known to arrive at the website containing the prior art reference. The second one is . . . , [a]ssuming the [person of ordinary skill in the art] would have done so, would the [person of ordinary skill in the art], exercising reasonable diligence, have located the prior art reference on the site? And these are separate and distinct requirements, and if you fail one of them, the document is not publicly accessible.”).” slip op. at 27

  • Strike new argumentNew argument consideredDecided for petitioner

    “addressed squarely by the principles set forth in Hulu, which addresses the standards at the institution stage and during the trial for evaluating evidence proffered to show asserted art qualifies as a printed publication. Specifically, after a petitioner has presented “evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent,” such that trial is instituted, “some limited opportunities exist for the petitioner to present new evidence later.” Hulu at 13–14. These “limited opportunities” include “in a reply to the patent owner response,” provided that the additional evidence is “responsive to the prior briefing” and provided that the additional evidence does not require “completely reopen[ing] the record, by, for example, changing theories after filing a petition.” Id. at 14–15. Although Patent Owner contends that “[t]his is not an example of permissible rebuttal evidence, but rather a belated attempt to fill a gap in the evidence in the Petition,” we disagree. See Sur-reply 6. Rather, the 7 Patent Owner appears to refer incorrectly to Exhibit 1040 instead of Exhibit 1041 when identifying “articles allegedly referring to RemoteCentral.com.” See Sur-reply 5–6. progression within the instant proceeding comports well with the Hulu framework. During the preliminary proceeding, Petitioner came forth with “evidence sufficient to establish a reasonable likelihood that [RadioShack] was publicly accessible before the critical date of the challenged patent,” just as Hulu demands. Hulu at 13; Inst. Dec. 23 (“[W]e determine that Petitioner’s showing regarding public accessibility of RadioShack is sufficient under the standard we apply at this stage of the proceeding.”). Patent Owner challenges RadioShack’s status as a printed publication in its Response, just as Hulu contemplates. Hulu at 15; PO Resp. 28–41. And Petitioner submits additional evidence that replies to that challenge without changing its theory that RadioShack qualifies as a printed publication by virtue of its accessibility on the RemoteCentral.com web site and in light of date indicia on RadioShack itself.8 See Hulu at 15–16; Reply 7–13. Moreover, in determining that Petitioner’s additional evidence directed at RemoteCentral.com is properly considered, we are further mindful of the Federal Circuit’s endorsement that “the petitioner in an inter partes review proceeding may introduce new evidence after the petition stage if the evidence is a legitimate reply to evidence introduced by the patent owner.” Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372, 1830–81 (Fed. 8 In its Reply, Petitioner also relies on evidence of publication of RadioShack on Radio Shack’s own public website and on “a third location,” hifi-remote.com. Reply 14. As we discuss below, we determine that the presence of RadioShack on RemoteCentral.com is sufficient to qualify RadioShack as a printed publication. We therefore do not reach the issue of whether presence on either the Radio Shack web site or on hifi-remote.com is an improper new theory raised by Petitioner in its Reply. See Tr. 8:13– 9:23 (Petitioner discussing whether reliance on hifi-remote.com presents a different theory than set forth in the Petition). Cir. 2018); see also Vidstream LLC v. Twitter, Inc., 981 F.3d 1060, 1065 (Fed. Cir. 2020) (“The Board denied VidStream’s Motion to Exclude, holding that it was appropriate to permit Twitter to respond to VidStream’s challenge [to the status of Bradford as a printed publication] by providing additional evidence to establish the Bradford publication date. We conclude that the Board acted appropriately, for the Board permitted both sides to provide evidence concerning the reference date of the Bradford book, in pursuit of the correct answer.”). We accordingly give due weight to Petitioner’s additional evidence of RadioShack’s accessibility on the RemoteCentral.com web site.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “1 Patent Owner objected to Petitioner’s demonstrative slides 45 and 68 as presenting a new argument that was not previously made with respect to challenged claims 2 and 10. Paper 27; see Paper 26 (Petitioner’s demonstratives), 45, 68. At the oral hearing, we reserved ruling on the objections. Tr. 5:23–6:3. Both slides reproduce the same portions of Exhibits 1002 and 1025, with the statement that “A press and hold for an auto-scan or brand-scan is admitted prior art.” Paper 26, 45, 68. As explained below, we do not reach the predicate position upon which the objections are based. See Tr. 5:8–11 (Petitioner stating that “this Board only needs to resolve this objection if it accepts Roku’s claim construction argument that the claims cover a press and hold of a single button, but that they do not cover pressing multiple buttons to present that argument in the alternative. So, if you reject that argument, you don’t even have to resolve the objection.”). We accordingly dismiss the objections as moot.” slip op. at 2

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “We agree with this assessment, and the parties do not specifically advocate for one articulation over the other in this proceeding. See Pet. 8 (Petitioner asserting that “[t]he Challenged Claims are unpatentable under both proposed levels”); PO Resp. 5 (Patent Owner stating its “position that the challenged claims are unpatentable under either proposed level of ordinary skill”). We adopt Patent Owner’s proposed statement of the level of ordinary skill as advanced in the related ITC Investigation. But we note that we would reach the same ultimate conclusion that Petitioner shows, by a preponderance of the evidence, that all challenged claims are unpatentable were we to adopt Petitioner’s proposal instead.” slip op. at 12

  Patent outcomesUS 8,378,875 mixed
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,378,875
• Samsung Electronics Co., Ltd. v. Netlist, Inc.Instituted
  PTAB · Aug 2, 2023 · IPR2023-00455 · APJ Daniel J Galligan · IPR · Institution

  The Board instituted inter partes review of claims 1–29 on all asserted grounds, finding a reasonable likelihood of success on the Perego and JESD79-2 obviousness ground.

  RulingsInstitution decision

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

    “institution under 35 U.S.C. § 314(a) because the factors identified in Apple, Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), weigh in favor of denying institution in view of the district court litigation. Prelim. Resp. 53–56. A Memorandum from Director Vidal titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . 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 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’215 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5

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

    “In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “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.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6

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

    “On this record, we are sufficiently persuaded by Petitioner’s argument that a person of ordinary skill in the art would have combined the teachings of Perego and JESD79-2. As Petitioner correctly points out (Pet. 32), Perego discloses using DDR2 memory devices. Ex. 1071, 10:56–59 (“Other memory devices may be implemented on module 400, for example, Double Data Rate 2 (DDR2) DRAM devices and Synchronous DRAM (SDRAM) devices.”). On this record, we find this teaching to use DDR2 sufficiently supports Petitioner’s rationale to combine Perego with JESD79-2, which is the JEDEC DDR2 SDRAM Specification. Ex. 1064, 1 (cover page); see also Prelim. Resp. 44 (parenthetical noting that “JESD79-2 is a specification for individual DDR2 SDRAMs”). As to Patent Owner’s argument that Rambus memories lack a chip select network (Prelim. Resp. 25–26), the reference on which Patent Owner relies discloses that chip select information is still used in the particular Rambus devices described. See Ex. 1069, 11 (“[I]n the Rambus bus organization, all addresses, commands, data, and chip-select information are sent on the same bus lines.”), 12 (“[T]he example system uses a total of nine (9) lines to carry all necessary information, including addresses, commands, chip-select information, and data.”). Thus, on this record, Patent Owner’s focus on the lack of a chip select network, which is not recited in the claims of the ’215 patent, appears misplaced. We address Patent Owner’s more specific arguments below in the discussion of individual claim recitations.” slip op. at 14

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

    “Claim 21 is method claim and recites similar structure in the preamble. Petitioner cites this claim language in support of its position that a rank can have just one memory device. Pet. 28 (citing Ex. 1001, 37:32–38 (portion of claim reproduced above)). On this record, we determine that the claim language supports Petitioner’s position. Claim 1 recites “at least one first memory integrated circuit in the first rank and at least one second memory integrated circuit in the second rank.” This language is met if there is one memory integrated circuit in each rank because “at least one” includes just one. On this record, we disagree with Patent Owner’s argument that this claim language “do[es] not define the term ‘rank’” but, rather, “provide[s] context that a claimed ‘buffer’ can be, but need not be, coupled to multiple memory devices in the rank.” See Prelim. Resp. 9–10. Claim 1 recites “a buffer coupled between the at least one first memory integrated circuit and the memory bus, and between the at least one second memory integrated circuit and the memory bus,” and it further recites “enabl[ing] communication of the first data burst between the at least one first memory integrated circuit and the memory controller through the buffer” and “enabl[ing] communication of the second data burst between the at least one second memory integrated circuit and the memory controller through the buffer.” If there is only one memory device in each rank, then the buffer will only be connected to the one memory device in each rank. If two memory devices are the “at least one first memory integrated circuit in the first rank” then the buffer would be “coupled between the [two memory devices] and the memory bus.”” slip op. at 10

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR
  Patents in suitUS 9,858,215
• Crowdstrike, Inc v. Open Text Inc.Instituted
  PTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution

  The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.

  RulingsInstitution decision

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

    “even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13

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

    “Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21

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

    “f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,418,250
• Vector Flow, Inc. v. Hid Global CorporationInstitution denied
  PTAB · Jul 17, 2023 · IPR2023-00353 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution of IPR challenging claims 11–15, exercising § 314(a) discretion based on the parallel litigation’s timing, investment, and issue overlap.

  RulingsInstitution decision

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

    “Although we agree with Patent Owner that a stay appears unlikely even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Also, we do not understand the statements in CAO Lighting Patent Owner highlights as setting forth a general policy by the district judge. Rather, in that case, although the timing and issue overlap factors weighed against granting a stay, the court considered other factors as well. See CAO Lighting, 2022 WL 17752270 at *2. We accordingly treat this factor as neutral.” slip op. at 19

  • Expert testimonyOther

    “Importantly, Petitioner never advances any firm position on how the terms “unique” and “exclusively” should properly be understood in this context, limiting the basis on which we might fully evaluate Petitioner’s argument. Instead, Petitioner’s general position is that it “does not believe express claim construction is necessary at this time for this IPR.” Pet. 14. More specifically, Petitioner asserts that “it is possible” that the terms “may be interpreted to require that a defined user profile have access privileges and credentials that are unique and exclusive to the underlying user, e.g., which are not shared by any other user or user profile in the system.” Id. at 40 (emphases added). Petitioner’s expert, Dr. Madisetti, offers no clarification. See Ex. 1002 ¶ 103 (asserting that “it is possible that the words ‘unique’ and ‘exclusively’ could be interpreted” in the same way). Patent Owner disagrees with Petitioner’s speculation as to the “possible” interpretation of the terms. Prelim. Resp. 21–26. But we need not resolve that disagreement to conclude that Petitioner’s analysis fails to articulate a “compelling” meritorious challenge. A conclusion of unpatentability cannot “plainly” follow from an analysis that declines to offer nothing more than “possibilities” as to how the claims might be understood.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “6 Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years’ experience in distributed or network-based computer systems, and would have had a working knowledge about various ways to receive data from network-connected devices (such as sensors) and then process and/or act upon that data as needed.” Pet. 11. Petitioner adds that “[a] person could also have qualified with more education and less technical experience, or vice versa.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Madisetti. Ex. 1003 ¶ 16. Patent Owner does not state whether it agrees or disagrees with Petitioner’s proposal. Nevertheless, we find Petitioner’s proposal consistent with the level of skill reflected by the prior art and accordingly apply it for purposes of this Decision. 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 24

  Discretionary denial
  Patents in suitUS 8,234,704
• Crowdstrike, Inc. v. Open Text Inc.Instituted
  PTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution

  The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.

  RulingsInstitution decision

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

    “projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11

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

    “Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16

  • BurdenInstitutedInstituted

    “3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39

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

    “On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 9,578,045
• Amazon.Com, Inc. / Amazon Web Services, Inc. et al. v. Almondnet, Inc And Intent Iq, LLCInstitution denied
  PTAB · Jun 6, 2023 · IPR2023-00227 · APJ Kristen L Droesch · IPR · Institution

  The Board denied institution of review of claims 36 and 37 as time-barred under § 315(b), and denied the motion for joinder as moot.

  RulingsInstitution decision

  • PTAB / AIA Trials › §315(b) time barDenied

    “instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” Patent Owner served Petitioner with a complaint alleging infringement of the ’398 Patent in September 2021. Ex. 1016. Petitioner filed the Petition more than one year later on November 18, 2022. Pet. 80. Petitioner relies on its request to join the Meta IPR to avoid the time bar of 35 U.S.C. § 315(b). Pet. 9 (“Because Petitioner files an accompanying motion for” slip op. at 6

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “In any event, in addition to the mootness of Petitioner’s Motion for Joinder due to termination of the Meta IPR, we are not persuaded that joinder would have been appropriate. More specifically, we are not persuaded by Petitioner’s arguments that “joinder will have little, if any impact on the Meta IPR because . . . the schedule would be unaffected.” Mot. 3; see also Mot. 4 (“Joinder will not affect the schedule in the Meta IPR.”). We note that stipulated Due Date 2 for filing a reply in the Meta IPR was May 2, 2023. See IPR2022-00773, Paper 14. In view of the fact that stipulated Due Date 2 in the Meta IPR has passed, and no reply has been filed in the Meta IPR, Petitioner does not sufficiently address how “the requested joinder will not create any additional burden for the Patent Owner or the Board and will not require any additional time or resources.” Pet. Prelim. Reply 1. As pointed out by Patent Owner, “even if this proceeding went forward by essentially ‘picking up’ where the Meta . . . IPR left off, the existing schedule [of the Meta IPR] would need to be pushed back significantly, to allow time after institution for Petitioner[] to depose Patent Owner’s expert and prepare a reply.” PO Prelim. Sur-Reply 2. Because Petitioner does not meaningfully address the impact joinder would have had on the Meta IPR schedule, joinder also would not have been appropriate.” slip op. at 7

  Discretionary denial
  Patents in suitUS 8,677,398
• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2022-00366 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the Shaffer-based and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain 7 As noted, Patent Owner hinges its arguments on construing “request.” See Tr. 50:16–18. Independent claim 14’s programmable clock controller includes instructions to perform a method that, like claim 1’s method, receives the request provided by the first master device and provides the claimed outputs without reciting any intervening assessment of the request. Independent claim 18 similarly recites that a clock controller coupled to an arbiter is configured to adjust a variable clock frequency of the bus in response to receiving the request from the first master device, without reciting any intervening assessment of the request. specification is consistent with a system that makes no independent assessment of a request. The example states that “[t]he clock controller can output a variable clock frequency that varies in response to one or more inputs from the at least one master device.” Id. at 2:38–40. This exemplary embodiment supports Petitioner’s contention that we should not construe “request” as requiring independent assessment before acting on the request.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner

    “The IEEE article cited by Patent Owner is not sufficient evidence to demonstrate the requisite nexus. Intel’s employee testified that it takes years and thousands of engineers to build a new generation of processors because such devices include thousands of features and enhancements. Ex. 1058, 811:2–12. Petitioner notes that Patent Owner accused only the Speed Shift feature of infringing the ’759 patent and that Patent Owner’s damages expert, Dr. Sullivan, “conceded that many of the thousands of other features ‘have nothing to do with what [Patent Owner] accuses.’” Pet. Reply 23 (quoting Ex. 1057, 690:19–691:24). Petitioner additionally points out that, in a subsequent trial, Patent Owner’s expert agreed that Intel would have sold the accused products regardless of the alleged infringement. Id. (citing Ex. 1061, 771:13–22 (testifying that Intel would have made the same sales, even if the jury found the products not to infringe)). The record before us does not show that Intel’s product or products underlying the infringement verdict are coextensive with “the invention disclosed and claimed.” See Fox Factory, 944 F.3d at 1373, 1377; see Facebook, Inc. v. Express Mobile Inc., IPR2021-01457 Paper 38 at 76–80 (PTAB March 14, 2023) (concluding an infringement verdict was insufficient to establish nexus). Rather, the record shows that the accused products contained many features beyond those relevant to the ’749 patent. Ex. 1057, 690:19–691:24; Ex. 1058, 815:16–816:21. information that would allow us to weigh the extent of Intel’s commercial success based on the alleged sales of products infringing the claimed invention. In particular, the record does not reflect whether the infringing device represented an increase in market share over a prior, noninfringing device or any other aspect that would allow us to place the verdict’s amount in context. See, e.g., In re Applied Materials, Inc., 692 F.3d 1289, 1300 (Fed. Cir. 2012) (“An important component of the commercial success inquiry in the present case is determining whether Applied had a significant market share.”). On this record we do not find evidence of commercial success sufficient for purposes of establishing non-obviousness.” slip op. at 25

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759
• Intel Corporation / Opensky Industries, LLC v. VLSI Technology LLCAll claims unpatentable
  PTAB · May 12, 2023 · IPR2021-01064 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1, 14, 17, 18, 21, 22, and 24 are unpatentable as obvious over the asserted Shaffer- and Chen-based grounds; Patent Owner’s motion to exclude is denied.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “We do not read the specification’s disclosure of alternative embodiments as establishing that the claimed “request” mandates deciding whether to act on the request. Nothing in the specification describes a request that itself requires independent assessment. Stated otherwise, although any given “request” could be evaluated to determine what, if any, action to take in response, any such evaluation does not depend on the nature of the request. The claims do not include language restricting how a request is processed, but instead read on systems or methods in which a certain” slip op. at 8

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

    “While Chen does not expressly disclose power savings, the record supports a finding that skilled artisans would have understood power savings as an important consideration. See Ex. 1056, 386:2–4 (Patent Owner’s expert, Dr. Conte, testifying in the litigation that “power savings in designing a processor” is “extremely important”). Indeed, Terrell discloses the minimum frequency that allows the processing elements to function correctly while using the least amount of power.” Ex. 1005 ¶ 5. We conclude therefore that the prospect of achieving power savings would have motivated skilled artisans to operate Chen’s system at a reduced clock frequency when not required by performance demands. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“‘[U]niversal’ motivations known in a particular field to improve technology provide ‘a motivation to combine prior art references even absent any hint of suggestion in the references themselves.’” (quoting Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797–99 (Fed. Cir. 2021))). Patent Owner contends that Chen and Terrell have opposite goals because Chen focuses on increasing frequency for performance while Terrell focuses on reducing frequency for power savings. PO Resp. 32–37. Petitioner, however, explains how the teachings would work together to “select a clock frequency that increases the devices’ frequency only when needed, to reduce power consumption, even if the devices can use higher speeds.” Pet. 45. Such a combination is consistent with Chen’s teachings of increasing frequency for certain operations, and also consistent with Terrell’s teachings of reducing frequency when possible. In this way, we credit Dr. Jacob’s testimony that the combination would have balanced “the inherent trade-off between highest performance at the highest cost, and lower (but perhaps still acceptable) performance at a lower cost.” Ex. 1055 ¶ 112. Thus, the combined system Petitioner asserts would have been able to operate at reduced frequency (conserving power) in low-activity times and increased frequency when the system required higher performance. Id. ¶ 117. performance demand, we do not agree with Patent Owner that the combination defeats Chen’s intended purpose. See PO Resp. 37–42. Patent Owner’s interpretation, that Chen requires maximum speed at all times, is implausible in light of Terrell’s recognition that systems may spend time in an idle state (Ex. 1004 ¶ 54), and Chen’s disclosure of operating devices below their maximum speed (Ex. 1003, 3:42–43 (“I/O devices which normally operate at 66 M[H]z can be operated at 50 M[H]z.”)). We conclude that Chen’s “principle of operation and stated goal” are preserved by the asserted combination, in which bus speed is reduced when performance needs allow and then increased to the limit of a device’s capabilities when required. Patent Owner argues additionally that the asserted combination would have required modifying devices to support reduced speed, and that the required modifications would increase cost and complexity such that skilled artisans would not have made the combination. PO Resp. 42–47. Petitioner responds, on the other hand, that devices with thousands of transistors were commonplace at the time of the ’759 patent’s invention. Pet. Reply 18 (citing Ex. 1055 ¶¶ 118–119). We agree with Petitioner that the added complexity required by the asserted combination would not have risen to a level that skilled artisans would have been dissuaded from making the combination. In particular, we agree that, by 2005, when the application resulting in the ’759 patent was filed, Terrell’s approach did not present a significant technological obstacle to a skilled artisan seeking to modify Chen’s system. See Pet. Reply 18. We credit Dr. Jacob’s testimony that technology had advanced considerably following Chen’s mid-1990s disclosure such that the modification would have imposed a modest likewise would minimize any challenge skilled artisans would have had with modifying Chen’s master devices. See PO Resp. 42–43. Those devices would have required only modest changes to work with the modified system, and skilled artisans implementing Chen’s system in 2005 would have done so with integrated devices, thus eliminating Patent Owner’s asserted need to modify a host of disparate devices. See Ex. 1055 ¶¶ 119, 132–137. Patent Owner further challenges Petitioner’s reliance on Terrell’s statement that its teachings apply to “[a]n on-chip bus that hosts two or more bus masters, all of which share a common bus clock.” Ex. 1004 ¶¶ 6, 8; PO Resp. 47–48 (citing Pet. 46). Patent Owner points out that Chen’s bus 40 is a peripheral, off-chip bus and implicates different design constraints. Id. Petitioner contends that, regardless of whether Chen’s bus is itself an on-chip bus, technological progression after Chen resulted in master devices moving on-chip and using an on-chip bus. Pet. Reply 19 (citing Ex. 1055 ¶¶ 132–137). Notwithstanding Dr. Jacob’s testimony that Chen’s system would be implemented differently by the time of the ’759 patent, the dispute does not change our determination because, as discussed above, Petitioner has shown that skilled artisans would have made the asserted combination, aside from Terrell’s statement about on-chip buses. Terrell’s statement of particular applicability to on-chip buses does not undermine its separate statement regarding the desirability of reducing power consumption by reducing clock frequency when possible. Ex. 1004 ¶ 5. That express teaching shows that skilled artisans understood the possibility of reducing power by reducing frequency. We conclude that skilled artisans had reason to arrive at the asserted combination.” slip op. at 32

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner

    “When the evidence shows that a product includes “the invention disclosed and claimed in the patent,” we presume that any commercial success of the product is due to the patented invention. PPC Broadband v. Corning Optical Commc’ns, 815 F. 3d 734, 746–747 (Fed. Cir. 2016). Such claims, but also that it is coextensive with them. See Fox Factory, Inc. v. SRAM, LLC, 944 F.3d 1366, 1373 (Fed. Cir. 2019) (“[P]resuming nexus is appropriate ‘when the patentee shows that the asserted objective evidence is tied to a specific product and that product embodies the claimed features, and is coextensive with them.” (quoting Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1072 (Fed. Cir. 2018))).” slip op. at 23

  • ExcludeMotion to exclude, deniedDenied

    “We agree with Petitioner and deny Patent Owner’s motion because Dr. Jacob’s cross-examination and his confirmation of the declarations in this proceeding address Patent Owner’s hearsay concern.11 IPR testimony is 10 Petitioner does not dispute that Dr. Jacob’s Original Declarations are offered “to prove the truth of the matter asserted.” PO Mtn. Exclude 3; Fed. R. Evid. 801(c)(2). 11 Patent Owner’s argument that OpenSky did not contact Dr. Jacob before filing its Petition with Dr. Jacob’s Declarations is not persuasive in light of his willingness to testify in this proceeding. PO Mtn. Exclude 6–10. not allow an expert to “testify” in person at an IPR hearing. See 37 C.F.R. § 42.53 (a)–(b)(1); 35 U.S.C. § 316(a)(5); 35 U.S.C. § 23. Testimony is instead submitted as evidence in the form of affidavits and deposition transcripts. See 37 C.F.R. §§ 42.53, 42.63. Our rules, therefore, contemplate that declarants in IPRs do not “testify” in the traditional sense of giving live testimony in a courtroom. As other Board decisions have noted, “[w]ithout exception, the Board accepts the filing of sworn witness declarations in lieu of live testimony in administrative patent trials.” Grünenthal Gmbh v. Antecip Bioventures II LLC, PGR2018-00062, Paper 32 at 15 (PTAB Oct. 29, 2019). Our procedures adopt that practice for its efficiency and ensure fairness by allowing cross-examination. See id.; 37 C.F.R. § 42.51(b)(ii). Dr. Jacob has made himself available for cross-examination and confirmed that the declarations express his opinions here, in this proceeding. Thus, in these respects, the Original Declarations are no different than the other testimony relied on by the parties, and are not hearsay subject to exclusion. Indeed, during his cross-examination, Dr. Jacob confirmed that the Original Declarations set forth his opinions regarding the ’759 patent. Ex. 2066, 69:12–17 (identifying Ex. 1002), 72:11–21 (identifying Ex. 1046), 73:4–10 (confirming the declarations set forth his opinions). In Intel’s proceeding asserting the same grounds and seeking joinder, Dr. Jacob filed a declaration reaffirming his Original Declarations and confirming that he would appear for cross-examination. IPR2022-00366, Ex. 1049. We noted that Dr. Jacob’s reaffirming declaration and availability for cross-examination allayed concerns about hearsay. Paper 43 (joinder decision), 15. While the reaffirming declaration is not of record in this proceeding, opinions serve the same role. Patent Owner has suffered no prejudice from Dr. Jacob’s Original Declarations. We have considered Patent Owner’s other arguments (Paper 95) and find them just as unavailing. The fact that the Jacob declarations were prepared for another proceeding is immaterial in this case because Dr, Jacob has expressly adopted them for this proceeding. Id. at 1–3. Nor is a hearsay exception necessary, as the reaffirmance of the prior testimony by Dr. Jacob and his cross-examination in this proceeding overcomes any plausible hearsay argument or the necessity for a hearsay exception. Id. at 3–5. Finally, there is no merit to Patent Owner’s suggestion (id. at 5) that reliance on Dr. Jacob’s reply declaration is somehow contrary to our procedures, which specifically provide for replies by the petitioner (including new declarations). See USPTO Consolidated Trial Practice Guide 73 (Nov. 2019).12 For the reasons given, we deny Patent Owner’s Motion to Exclude.” slip op. at 41

  Patent outcomesUS 7,725,759 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 7,725,759

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.