- PTAB · Jan 7, 2025 · IPR2024-01030 · APJ Richard H Marschall · IPR · Institution
The Board instituted review of claims 1–37 on all asserted grounds after finding a reasonable likelihood that Howell-596 anticipates claims 1, 9, 10, 14, 15, and 18.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id. Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’483 patent based on any ground Petitioner raised or reasonably could have raised in this Petition.” Pet. 82. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We agree with Petitioner that the record fails to show that Hattori-912 is cumulative of Krulevitch. As Petitioner correctly points out, Patent Owner does not adequately support its cumulativeness argument by comparing the disclosures of Hattori-912 and Krulevitch. See Prelim. Resp. 27. Patent Owner seems to assume that Petitioner’s mere reliance on Hattori-912 to teach similar limitations as those arguably disclosed by Krulevitch establishes the cumulative nature of the disclosures, but merely relying on new prior art to teach the same limitations as art before the Examiner, standing alone, does not establish cumulativeness of the art as a whole. See id. The situation here underscores this point, where the new prior art (Hattori-912) expressly discloses aspects of eyewear that the prior art before the Examiner (Krulevitch) does not, rendering Hattori-912 arguably more readily combinable with other eyewear prior art such as Blum-741. See Pet. 53–65. Moreover, Petitioner expressly argues that Hattori-912 discloses eyewear limitations that Krulevitch does not. See id. at 55–59 (“Hattori-912 discloses an eyewear frame having a ‘hollow part 30’ in which electronic components are embedded”), 64–65 (“Hattori-912 discloses that the sealed module is embedded in the eyewear frame.”). Under these circumstances, we do not view the disclosures of Hattori- 912 and Krulevitch, or the obviousness arguments they raise, as sufficiently similar to satisfy the first prong of the Advanced Bionics framework. We also decline Patent Owner’s invitation to discretionarily deny on the basis that the grounds based on Blum-741 and Hattori-912 would present a waste of resources.” slip op. at 13
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Reference is prior artInstituted
“2. Discussion “Under 35 U.S.C. § 102 a claim is anticipated ‘if each and every limitation is found either expressly or inherently in a single prior art reference.’” King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1274 (Fed. Cir. 2010) (quoting Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998)). “Anticipation requires the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). A reference inherently discloses an element of a claim “if that missing characteristic is necessarily present, or inherent, in the single anticipating reference.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citing Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). “Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Therasense, 593 F.3d at 1332 (quoting Cont’l Can, 948 F.2d at 1269).” slip op. at 19
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 8,708,483 - PTAB · Jan 7, 2025 · IPR2024-01071 · APJ Richard H Marschall · IPR · Institution
The Board instituted IPR on claims 1–19 and all asserted grounds, finding a reasonable likelihood that Howell-596 and Howell-158 render claims 1 and 19 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion Based on the foregoing, Petitioner establishes a reasonable likelihood of showing that the combination of Howell-596 and Howell-158 renders claim 1 obvious. We have also reviewed Petitioner’s arguments and evidence addressing independent claim 19. See Pet. 43–44. Based on our review of the current record, Petitioner also establishes a reasonable likelihood of proving that the combination of Howell-596 and Howell-158 renders claim 19 obvious.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Here, Petitioner provides a Sotera stipulation: “Petitioner hereby stipulates that, if the Board institutes review, Petitioner will not pursue in the Litigation invalidity of the ’541 patent based on any ground Petitioner raised or reasonably could have raised in this petition.” Pet. 80–81. Petitioner argues that the Fintiv Memo “unambiguously states three times that the Board ‘will not’ discretionarily deny institution due to parallel litigation when the petitioner files a Sotera stipulation.” Prelim. Reply 1 (citing Fintiv Memo at 3, 7, 9). We agree with Petitioner. In light of the Director’s Fintiv guidance regarding a Sotera stipulation, we decline to exercise discretion under § 314(a) to deny institution of inter partes review. See Fintiv Memo 3 (“[T]he 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.”); see also id. (stating that the Fintiv Memo “is issued under the Director’s authority to issue binding agency guidance to govern the PTAB’s implementation of various statutory provisions”).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 11–12 (citing Ex. 1002 ¶¶ 30–34). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’541 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,905,541 - PTAB · Jan 6, 2025 · IPR2024-01069 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence 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 of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention would have had “at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “would have also had at least 2 years of experience designing consumer electronics, such as eyewear with electronics.” Pet. 15–16 (citing Ex. 1002 ¶ 32). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 16 (citing Ex. 1002 ¶ 32). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’355 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,613,355 - PTAB · Jan 6, 2025 · IPR2024-01070 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As correctly noted by Petitioner (see Prelim. Reply 1), the Guidance Memo is “binding agency guidance.” Guidance Memo at 3. “[T]the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation 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.” Id. at 7. The Guidance Memo makes no exception for parallel litigation in which expert reports have been exchanged or litigation with a third party involving the challenged patent. Nor has Patent Owner identified any instance in which the Board has determined there to be such exceptions to the Director’s guidance. Indeed, Patent Owner admits that it “is unaware of any post- [Guidance] Memo decision discretionarily denying institution in these circumstances.” Prelim. Sur-reply 1. Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h. Conclusion Accordingly, at this stage of the proceeding, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that claim 1 is anticipated by Brunton.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree.” Pet. 9 (citing Ex. 1002 ¶¶ 28–31). Petitioner contends that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 9–10 (citing Ex. 1002 ¶¶ 28–31). Patent Owner does not contest Petitioner’s proposed definition or proffer a definition of its own. See generally Prelim. Resp. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the ’174 patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “no claim terms require an express construction to resolve the challenges here.” Pet. 10. Petitioner notes that “the ’174 patent describes a number of claim terms, many in quotation marks, by what the terms refer to or may refer to” and asserts that “[t]hese descriptions in the specification are consistent with the plain and ordinary meaning of these claim terms.” Pet. 10–11 (citing Ex. 1002 ¶¶ 50–51). Patent Owner does not oppose Petitioner’s contentions or proffer any constructions of its own. See generally Prelim. Resp. At this time, we determine that no express construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence during the trial, as permitted by our rules.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,801,174 - PTAB · Dec 31, 2024 · IPR2024-01072 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–26 and all asserted grounds after finding a reasonable likelihood that claim 1 would have been obvious over Jannard.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)9 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv 9 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- 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 (2024). Upon consideration of the papers, 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 ’960 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical or manufacturing engineering; mechatronics; electrical engineering plus coursework in mechanical engineering, manufacturing engineering, or mechatronics; or a similar technical degree,” and “at least 2 years of experience designing eyewear and/or consumer electronics.” Pet. 10 (citing Ex. 1003 ¶ 28). Petitioner adds that “[w]ork experience could substitute for formal education and additional formal education could substitute for work experience.” Id. at 10–11 (citing Ex. 1003 ¶ 28).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Here, neither party sets forth any term for claim construction. Pet. 11; see generally Prelim. Resp. Thus, for purposes of this Decision, we afford the claim terms their plain and ordinary meaning. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,598,960 - PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - Apple Inc. v. Immervision, Inc.All claims unpatentablePTAB · Jul 29, 2024 · IPR2023-00472 · APJ Kristina M Kalan · IPR · Final written decision
Claims 1–7 are unpatentable: claims 1 and 3–7 are anticipated by Thibault, and claims 1–7 are obvious over Thibault.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In our Institution Decision, we adopted Petitioner’s undisputed contention that a POSITA (person of ordinary skill in the art) “would have had at least a Bachelor’s degree in an academic area emphasizing physics, optical engineering, electrical engineering and/or a similar discipline, and at least five years of experience in developing and designing optical imaging systems and have familiarity with image processing algorithms and optical design software” and that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Pet. 8 (citing Ex. 1003 ¶ 15). Patent Owner states: “Solely for purposes of this Response, Patent Owner does not object to Petitioner’s definition of a POSA [person of ordinary skill in the art].” PO Resp. 14 (citing Ex. 2001 ¶ 45). Accordingly, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art with the exception of the open-ended phrase “at least,” which expands the range of experience indefinitely without an upper bound. The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on the level of skill in the art . . . [are not required] ‘where the prior art itself reflects an appropriate level and a need for testimony is not shown’” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“To the extent necessary to determine whether the disputed language of limitation 1[e] encompasses both Figure 6 and Figure 7, we agree with Petitioner that the language of limitation 1[e] encompasses both Figure 6 and Figure 7. We determine we need not expressly construe any other claim terms. See Vivid Techs., 200 F.3d at 803.” slip op. at 27
- Strike new argumentNew argument consideredDecided for petitioner
“presented a more comprehensive claim construction position in its Petition, we are not persuaded that Petitioner’s “claim construction” positions in this proceeding are improperly responsive or belated. Claim construction can be an evolving issue. We have reviewed Petitioner’s presentation of its arguments at the outset, in the Petition, and we have addressed the Petition’s arguments regarding whether limitation 1[e] is an intended use, above. Regarding the remaining arguments, we note that our rules provide that a “reply may only respond to arguments raised in the corresponding . . . patent owner response.” 37 C.F.R. § 42.23(b). The Board “will permit the petitioner, in its reply brief, to address issues discussed in the institution decision,” but a petitioner “may not submit new evidence or argument in reply that it could have presented earlier, e.g. to make out a prima facie case of unpatentability. A party also may submit rebuttal evidence in support of its reply.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 73 (Nov. 2019), available at https://www.uspto.gov/ TrialPracticeGuideConsolidated (citing Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015)). We have reviewed the parties’ post-institution arguments regarding limitation 1[e], and we are not persuaded that the subsequent development of both parties’ positions on the interpretation of this term throughout the course of this proceeding is contrary to our rules. “There is no rule, for example, requiring a petition to describe all possible or reasonable claim constructions and to present invalidity theories under those constructions.” Axonics, Inc. v. Medtronic, Inc., 75 F.4th 1374, 1380–81 (Fed. Cir. 2023). The Axonics court further opined that “we have continued to recognize that a petitioner is entitled under the APA to respond to new claim construction arguments made by a patent owner.” Id. at 1382. A recent Federal Circuit case addressing Axonics and a petitioner’s opportunity to respond to a patent owner’s newly presented claim construction argument, which was decided after oral hearing in this case, supports the Axonics approach. Apple v. Omni MedSci, No. 2023-1034, slip op. at 11–12 (Fed. Cir. June 21, 2024). This case summarizes some relevant pre-existing case law in reaching its conclusion that under “both Axonics and earlier precedents, the Board abused its discretion here in refusing to consider [petitioner] Apple’s reply argument.” Id. (citing SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d 1341, 1351 (Fed. Cir. 2016), rev’d on other grounds sub nom. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018); Hamilton Beach Brands, Inc. v. f’real Foods LLC, 908 F.3d 1328, 1338–39 (Fed. Cir. 2018)).” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed
“Thibault but, rather, only that “Thibault renders obvious claim 2.” Pet. 34 (citing Ex. 1003 ¶¶ 127–128). Petitioner argues that Thibault teaches “special optimization” of MTF to “control the image quality in production so that it remains in the specification.” Id. (citing Ex. 1004, 3). Petitioner further argues that “a POSITA would have understood that Thibault’s lens designs were intended to achieve ‘constant image quality across a whole field of view,’” or “that it would have been obvious to achieve such an outcome using known ‘guidelines’ within the industry.” Id. at 35 (citing Ex. 1003 ¶ 128). Petitioner provided no development of an anticipation position with respect to claim 2. Accordingly, although Petitioner’s uncontested position on claim 2 supports a finding of obviousness based on Thibault, because it is reasonable, not persuasively controverted, and supported by testimony, it does not support a finding of anticipation.” slip op. at 50
Patent outcomesUS 10,795,120 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,795,120 - PTAB · Jul 15, 2024 · IPR2024-00229 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–19 on all asserted grounds, finding a reasonable likelihood that Microchip would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“II. ANALYSIS We consider the arguments and evidence of the parties to determine whether Petitioner has met the reasonable likelihood standard for institution under 35 U.S.C. § 314(a).” slip op. at 9
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties agree that a POSITA would have a four year or bachelor’s degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 23–24 with Prelim. Resp. 14. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience and that work experience may take the place of some formal education. Id. Petitioner contends that a POSITA would have more familiarity with USB related documents and systems than contended by Patent Owner. We need not, and do not, resolve this dispute between the parties at this preliminary stage in this proceeding. We invite the parties to further address this issue, if they deem it necessary and appropriate. For purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, at this point, we consider the arguments and evidence from the standpoint of such a skilled artisan. If a POSITA was considered to have the additional work experience with USB systems and familiarity with USB standards as proposed by” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 24–25. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 20. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Ex. 1005, 2:60–66. We determine that this contention seems reasonable in view of the market demands acknowledged in the Specification. KSR, 550 U.S. at 418 (“Often it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace . . . to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”). Petitioner also contends that “modifying Chang to include dual-role ports would further its express goal of ‘easily establishing a connection between a computer and another computer.’” Pet. 35 (citing Ex. 1014 ¶ 3). And, Petitioner relies on the acknowledgement in the ’962 patent that smartphones have become “standalone computing devices.” Id. (citing Ex. 1005, 2:44–50). The Petition states: [A] POSITA would have been motivated to include dual-role port(s) to further Chang’s goal of connecting the upstream computer to the downstream phone acting as a computer. Welch, ¶178. Specifically, dual-role ports would allow consumer products, such as smartphones, that operate as computers (in host mode) to “easily establish[] a connection” (EX1014, [0005]) to the upstream host; the smartphone would plug into the dual-role port and automatically connect to the upstream host (through the bridge) when the smart phone switches to host mode . . . without requiring the user to switch between dedicated host- and device-ports. Welch, ¶¶178-179. Pet. 35–36. According to Petitioner with supporting testimony of its declarant, “[t]his avoids the inconvenience, hassle, and confusion of consumers having to keep track of (1) what mode their phone is operating in and (2) what mode(s) are supported by individual hub ports.” Id. at 36 (citing Ex. 1013 (Welch Decl.) ¶ 179). Here again, we determine that this reasoning provides rational underpinning, supported by evidence, that a skilled artisan would have been motivated to modify the USB hub module of Chang to include dual-role ports as described in Chang II.” slip op. at 32
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,645,962 - PTAB · Jul 15, 2024 · IPR2024-00230 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claim 1 under both asserted § 103 grounds, finding a reasonable likelihood that Chang and Chang II, alone or with Chutorash, render the claim 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) (2018); see 37 C.F.R. § 42.108 (2023). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of the challenged claim of the ’072 patent.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“The parties’ dispute regarding the level of ordinary skill in the art does not substantively impact our analysis for purposes of institution. Rather, we ordinary skill in the art that Petitioner shows that there is a reasonable likelihood that it would prevail in proving the unpatentability of the challenged claim. At this stage of the proceeding, however, we adopt Patent Owner’s proposed definition for one of ordinary skill in the art. Prelim. Resp. 13. This proposed definition is consistent with the ’072 patent and the asserted prior art, and we apply it in our analysis below. During trial, and in accordance with our Rules, the parties should address what substantive effect, if any, different proposed definitions for the level of ordinary skill in the art have on analyzing what the prior art teaches or in otherwise evaluating unpatentability of the challenged claim.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for patent owner
“III. CLAIM CONSTRUCTION Because the Petition was filed after November 13, 2018, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); 83 Fed. Reg. 51,340, 51,340–41, 51,343 (Oct. 11, 2018). In applying such standard, claim terms generally are given their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art, at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). physically embedded in a vehicle.” See Pet. 27–28. Patent Owner does not disagree with this proposed construction, but argues that we do not need to construe this term, or any other, for purposes of institution. Prelim. Resp. 19. We agree with Patent Owner. Thus, for purposes of our Decision on Institution, we do provide an express construction of any term. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”). And we afford the claim terms their plain and ordinary meaning. A final determination as to claim construction will be made at the close of the proceeding, based on all the arguments and evidence of record.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“dual-role port and a Mux to route the port to the appropriate transmission path. At this stage, we agree with Petitioner and find that it would have been obvious to substitute Chang II’s dual-role port for Chang’s port 50, as well as to include Chang II’s switching. Pet. 42–44, 64–65; Ex. 1013 ¶¶ 184– 185. In particular, we find persuasive Mr. Welch’s testimony that one of ordinary skill in the art would have been motivated to employ dual-role mode ports instead because employing dedicated ports requires having “‘multiple connectors, multiple [application-specific integrated circuit (ASIC)] pins and the like,’ which adds ‘overhead’ and ‘increase[s] the cost[s].’” Ex. 1013 ¶ 177 (quoting Ex. 1025,19 1:36–43) (second and third alterations in original). 19 US 8,683,085 B1, issued Mar. 25, 2014 (Ex. 1025, “Castleberry”). Chang II’s dual-role port for Chang’s port 50 “avoids the inconvenience, hassle, and confusion of consumers having to keep track of (1) what mode their phone is operating in and (2) what mode(s) are supported by individual hub ports.” Id. ¶ 179; Pet. 44. As Mr. Welch testifies, “[w]ith a dual-role port, the user would not have to know what mode the smartphone was operating in, and then switch the smartphone between the appropriate dedicated host or device port.” Ex. 1013 ¶ 179. At this stage, we find that this rationale also provides sufficient motivation for one of ordinary skill in the art to employ a dual-role port in lieu of host port 50. In addition, at this stage, we agree with Petitioner that “in view of a dual-role mode USB port, it would have been obvious to include ‘USB multiplexing switches connected to the USB port, the USB hub, and the USB bridge’ to route the downstream USB product to the appropriate path.” Pet. 62 (emphases omitted). This is consistent with Chang II’s teachings, which require such switching. E.g., 1015 ¶¶ 11, 21. In other words, to realize the benefits of the rationales for using dual-role ports in Chang, one of ordinary skill in the art would have included a switch to route the downstream port to the appropriate path. See Ex. 1013 ¶¶ 184–185. In addition, we agree with Petitioner and find that one of ordinary skill in the art would have had an expectation of success in modifying Chang to include dual-role ports and switching. Pet. 44. As we discuss above, dual-role ports, host/device detection, and multiplexing switches were already well-known.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,176,072 - PTAB · Jul 15, 2024 · IPR2024-00228 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–12 and 15–17 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Chang and Chang II.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “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 that follow, we institute an inter partes review as to claims 1–12 and 15–17 of the ’420 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level patent owner adoptedDecided for patent owner
“degree in electrical engineering or computer science and professional experience related to USB. Compare Pet. 22–23 with Prelim. Resp. 13. And, the parties also agree that a relevant advanced degree or additional education may take the place of at least some work experience may take the place of some formal education. Id. Petitioner contends that a POSITA would have more familiarity with USB related documents and system than contended by Patent Owner. We need not, and do not, resolve this dispute between the parties at this preliminary stage in this proceeding. We invite the parties to further address this issue, if they deem it necessary and appropriate. For purposes of this Decision, we adopt Patent Owner’s definition of the level of ordinary skill in the art. It appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, at this point, we consider the arguments and the evidence from the standpoint of such a skilled artisan. If a POSITA was considered to have the additional work experience with USB systems and familiarity with USB standards as proposed by Petitioner and the level of skill was enhanced, our Decision to institute trial would be further supported. However, our Decision to go forward with trial is supported by either of the definitions offered by the parties.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Petitioner states in the Petition that no terms need construction for this proceeding. Pet. 23–24. Patent Owner states that, at this time, Patent Owner sees no need to construe any claim language. Prelim. Resp. 18. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Ex. 1003, 2:56–62. We determine that this contention seems reasonable in view of the market demands acknowledged in the Specification. KSR, 550 U.S. at 418 (“Often it will be necessary for a court to look to . . . the effects of demands known to the design community or present in the marketplace . . . to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.”).” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,619,420
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.