- Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - Njoy, LLC / Njoy Holdings, Inc. v. Juul Labs, Inc.Rehearing deniedPTAB · Aug 12, 2024 · IPR2024-00267 · APJ Avelyn M Ross · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show a reasonable expectation of success for the proposed § 103 combination.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“STANDARD OF REVIEW Pursuant to 37 C.F.R. § 42.71(d): A party dissatisfied with a decision may file a single request for rehearing without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. When reconsidering a decision on institution, we review the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion exists where a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988).” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“green, left), placed inside the housing between the housing and heating element (red), and surrounding the heating element and portions of the liquid storage portion (blue). Otherwise, Combined Figure 4 is nearly the same as Annotated Figure 4. Compare Combined Fig. 4, with Ann. Fig. 4. Thus, Petitioner does not propose a simple substitution to include the mouthpiece housing of Thorens231 in the device of Thorens788 in the same manner as used in Thorens231. Rather, Petitioner proposes including the mouthpiece housing of Thorens231 in the device of Thorens788 and then further modifying its placement by inserting it into the housing. See Combined Fig. 4. Neither Petitioner nor Dr. Janet persuasively explain why this arrangement would be expected to be successful nor do they allege that such a modification would have been within the skill set of the ordinarily skilled artisan. In contrast, Patent Owner explains that Petitioner’s [Combined] Figure 4 appears to block any airflow through the device and out of the mouthpiece. Petitioner and its expert do not account for how the mouthpiece would be secured to the liquid storage portion in Thorens788. Moreover, as drawn by Petitioner, the wick touches what is presumably the air inlet for the mouthpiece (although Petitioner does not discuss where the air inlet is), which could adversely impact performance or user experience, such as draw resistance[.] Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Prelim. Resp. 50–51. Because Petitioner did not direct our attention to any argument or testimony to account for whether or how the modified device would function, Petitioner did not meet its initial burden of proof of showing that a person of ordinary skill in the art would have had an expectation of success in the combination. See Eli Lilly & Co. v. Teva Pharms. Int’l GmbH, 8 F.4th 1331, 1348–49 (Fed. Cir. 2021) (explaining that it is “at all times, [petitioner’s] burden to show that the claims would have been obvious, including that the skilled artisan would have had a reasonable expectation of success in achieving the claimed invention”).” slip op. at 8
§ 103 obviousnesscites KSRPatents in suitUS 11,134,722 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00566 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1, 5, 6, 8, 9, 15, and 16 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’657 patent, and we determine inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).9 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “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.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial. For the purposes of this Decision, we need not expressly construe any” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On the present record, we determine that Petitioner has shown sufficiently that Banerjee teaches outputting software intended to be installed on the designed integrated circuit that is capable of controlling the device into which the designed integrated circuit is installed. At paragraphs 72–83, Banerjee discloses the operation of its operating system optimization module. Ex. 1005 ¶¶ 38, 72–83. In particular, Banerjee teaches that the operating system optimization module can “compile a symmetric multiprocessing operating system” and that “the optimized operating system is compiled into a reduced footprint operating system that is instantiated in the device.” Id. ¶¶ 82–83. Because Banerjee teaches both compiling an operating system and instantiating that operating system in the designed device, the present record shows sufficiently that Banerjee teaches outputting software to run on the designed device. Patent Owner’s declarant, Joseph C. McAlexander III, P.E., disagrees with this interpretation, testifying that Banerjee’s paragraph 83 teaches only “compil[ing] the characteristics of the typical or ‘baseline’ ‘operating system configuration’ . . . in order to analyze its expected ‘footprint’ on the IC and how it is expected to be instantiated on the device.” Ex. 2001 ¶ 65. But the idea that Banerjee is concerned only with analyzing how the operating system is expected to be instantiated appears to contradict Banerjee’s teaching that the “reduced footprint operating system . . . is instantiated in the device,” which suggests actual, not merely expected, instantiation in the device. On the present record, beyond stating that “Banerjee only outputs a hardware description file,” Mr. McAlexander does not explain why Banerjee should be interpreted in this alternate fashion. Id. ¶ 66 (citing Ex. 1005 ¶¶ 44, 69, 84). There is no explanation of why the cited paragraphs of Banerjee should be interpreted to limit Banerjee’s disclosure (which, as discussed above, includes a teaching that the operating system is compiled and instantiated in the designed device) to merely outputting a hardware description file. Id. Accordingly, on the present record, Petitioner has shown sufficiently that Banerjee teaches or suggests limitation 1[d].” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,367,657 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00476 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 5, 6, 8, and 14 on all asserted grounds, finding a reasonable likelihood that Banerjee renders at least claim 1 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would be “familiar with automated circuit design” and “possess[] this knowledge through training and work experience, including have a Bachelor’s or Master’s Degree in computer science, electrical engineering, or a related field, with at least three years of practical experience.” Pet. 11–12. At this stage of the proceeding, Patent Owner does not challenge the Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp., generally. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’899 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“According to Petitioner, the term should be broadly construed to encompass “internal outputs from compilers that are then used by other portions of the design” and “any form of software or mechanics of ‘providing’ software.” Prelim. Reply 1–3. Petitioner contends that the term must be construed broadly to encompass the embodiment shown in the ’899 patent’s Figure 4 illustrating output 71 of compiler 67, which is an internal input to ASIC Design 69 described as “a circuit design such as a layout or a schematic that can be sent out to a manufacturer for fabrication.” Id. at 1–2 (quoting Ex. 1001, 9:59–61) (emphasis omitted). Petitioner directs us to the disclosure that Figure 4’s output 71 (ASIC Programming) “may be software to be programmed and/or stored in a fabricated ASIC.” Id. at 2 (quoting Ex. 1001, 9:61–62) (emphasis omitted). Petitioner contends that the ’899 patent defines “software” broadly. Id. Specifically, Petitioner directs us to a portion of the ’899 patent’s specification that states “[h]erein, reference to software may encompass one or more applications, byte code, one or more computer programs, one or more executable, one or more instructions, logic, machine code, one or more scripts, or source code, and vice versa where appropriate.” Ex. 1001, 17:6–10. Patent Owner asserts that Petitioner’s proffered claim construction is incorrect because the language of the claim itself “does not suggest ‘internal’ software for use by the design tool, nor that the second recited ‘output[]’ could be part of the first.” Prelim. Sur-Reply 2. According to Patent Owner, viewed in context, the ’899 patent defines “software” broadly for “an exemplary computer system, not the invention’s outputs.” Id. Patent Owner asserts this definition describes the software types that a computer could execute, not a definition of “software programming commands” recited in claim 1[d]. Id. Regarding the ’899 patent’s Figure 4, Patent Owner asserts that Petitioner has not shown that Programming 71 must be an internal output for internal use because both Design 69 and Programming 71 are shown as outputs, not inputs, of the compiler. Id. at 4. Regarding the term “layout,” Patent Owner asserts this is merely a description of physical hardware for fabrication and that “[i]t is impossible for ‘software programming commands’ to be ‘stored in “layouts.”’ Id. at 3 (citing Ex. 2001 ¶¶ 32, 76, 90). For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).5 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a 5 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf. stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). When such a stipulation is offered after the Board’s decision on whether to institute review, it is too late to gain the benefit of the rule articulated in the Guidance Memo. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13, 4 (PTAB Sept. 7, 2022) (precedential). Here, Petitioner “stipulates ‘not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.’” Prelim. Reply 10 (quoting Ex. 1020, 1). Petitioner offered this stipulation prior to a decision on whether to institute review, so it is timely under NXP. Accordingly, pursuant to the Guidance Memo, we do not exercise discretion under Fintiv to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Banerjee. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 3. Claims 5, 6, 8, and 14 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’899 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,924,899 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00398 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–12 and 15–20 based on all asserted grounds, finding a reasonable likelihood of success on claim 10 over Kalliola, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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 [one] 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review on all of the challenged claims of the ’680 patent based on all of the asserted grounds of unpatentability identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art, “at the time of the ’680 Patent would have been a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2–4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming” but that “[a]dditional industry experience or technical training may offset less formal education, while advanced degrees or additional formal education may offset lesser levels of industry experience.” Pet. 4–5 (citing Ex. 1003 ¶ 35). We find that Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art of the ’680 patent. This proposal is also supported by the Buehrer Declaration. See Ex. 1003 ¶ 35. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.9” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionNo construction neededOther
“construction in a parallel proceeding,11 for the following term: “[a] pairing signal.” Pet. 6 (emphasis omitted) (citing Ex. 1009, 15–16). Petitioner proposes that we construe “[a] pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Id. (emphasis omitted) (quoting Ex. 1009, 15–16). On the present record, Patent Owner does not dispute this proposed construction.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“ordinary skill in the art to “combine the prior art elements of Kalliola’s WCD communicating with a signal emitter via Bluetooth with Vauclair’s pairing menu and processor signals to yield the predictable result of a pairing signal in response to a first indication from a user to pair the WCD to the signal emitter” because “Bluetooth pairing and pairing menus were conventional well prior to the invention of the ’680 patent” and “there would have been a reasonable expectation of success.” Pet. 36 (citing Ex. 1003 ¶ 175; Ex. 1004 ¶ 4).” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,265,680 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00400 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 20–27 on all asserted grounds, finding a reasonable likelihood that claim 20 would be unpatentable as obvious over the Sweeney combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2023).” slip op. at 2
- Parallel petitionsDecided for petitioner
“v. Apple Inc. (W.D. Tex.), as a related proceeding. The parties disagree about the case number of the related case, with Petitioner identifying it as Case No. 6:23-cv-00077 and Patent Owner identifying it as Case No. 1:23- cv-00548-OLG. Pet. 82; Paper 6, 1. Petitioner also challenges claims 1–19 of the ’246 patent in a parallel petition filed in IPR2024-00399.1 See Paper 3, 1.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“receive telephone calls via a telephony network and to communicate Internet data.” Ex. 1001, 40:23–25. Petitioner argues that the combination of Kalliola and Turunen teaches this limitation and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with those of Sweeney. Pet. 26–30. On the present record, Patent Owner does not dispute this argument. Kalliola teaches that its wireless communication device includes “[l]ong-range communications” that “performs functions related to the exchange of information over large geographic areas (such as cellular networks) via an antenna.” Ex. 1006 ¶ 46, Fig. 3. The methods used for these long-range communications include “basic voice communications (e.g., via GSM).” Id. ¶ 46. Turunen teaches the transmission of internet data between a mobile device and the internet. Ex. 1007, 5:30–38. Dr. Buehrer testifies that a person of ordinary skill in the art would have expected Sweeney’s wireless device to be capable of sending and receiving telephone calls using the GSM network taught by Kalliola. Ex. 1003 ¶¶ 179–181. Dr. Buehrer also testifies that a person of ordinary skill in the art would have been motivated to modify the mobile device of Sweeney and Kalliola to be capable of internet data communications over Kalliola’s GPRS link. Id. ¶ 182.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] section 313 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). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Patent Owner does not request that we exercise our discretion to deny institution of either parallel petition. On the present record, we find that Petitioner’s explanation of the need for two parallel petitions is sufficient to justify not exercising discretion to deny institution in either case. The parallel petitions challenge different sets of claims of the ’246 patent, and there are a large number of claims challenged collectively between the two petitions.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). Patent Owner does not dispute Petitioner’s assertion on the present record. Prelim. Resp. 1–22. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’246 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Buehrer. See Ex. 1003 ¶ 35.10” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes construing two terms. Pet. 5–6 (citing Ex. 1011, 6–11). First, Petitioner proposes that we construe “[t]ime of flight calculations” as “[d]etermining the amount of time between when a signal is transmitted and when a reply signal is received.” Id. at 6. Second, Petitioner proposes that we construe “[s]ignal delay” as “[d]ifference in time between when a signal is received at two or more antennas.” Id. On the present record, Patent Owner does not dispute these proposed constructions. Prelim. Resp. 1–22. For the purposes of this Decision, we adopt the constructions proposed by Petitioner. Those constructions are supported by briefing in the parallel district court case, in which they were proposed by Patent Owner. Ex. 1011, 6–11.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - PTAB · Jun 11, 2024 · IPR2024-00251 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–9 and all asserted grounds, finding a reasonable likelihood that claims 1–3 and 5–9 are obvious over Neibauer and Cheng.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based upon the present record, we determine that Petitioner has made a sufficient showing that one of ordinary skill in the art would have had a reason to combine the asserted art in the manner described by Petitioner. We, therefore, find that Petitioner has shown sufficiently for purposes of institution that a person of ordinary skill in the art at the time of the claimed invention would have had reason to combine the teachings Neibauer and Cheng in the manner described in the Petition, and would have had a reasonable expectation of success in so doing.” slip op. at 31
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Cheng is sparse. Neibauer and Cheng were among dozens of other references identified on information disclosure sheets submitted during prosecution, and there is no clear evidence of record that Neibauer and Cheng were ever discussed substantively. See generally Ex. 1022. Petitioner argues that “the Examiner erred by overlooking [Neibauer and Cheng] and the compelling grounds of unpatentability they provided.” Prelim. Reply 1. “Neibauer and Cheng were stronger prior art because they disclosed the limitations the Examiner thought were missing from Chow, including the “uploading,” “reformatting,” and “automatically generating” limitations that he highlighted in the Notice of Allowance.” Id. In light of this sparse record, Petitioner’s showing on the merits with respect to Neibauer and Cheng is sufficient to demonstrate that the Office erred with respect to its consideration of these references during prosecution of the ’427 patent. To the extent the Office substantively considered Neibauer and Cheng and concluded that their combination does not teach claim 1, this was material error. It is also notable that the Office cited and relied on both Neibauer and Cheng in the reexamination of U.S. Patent No. 8,135,801 B2, a parent in the same family as the ’427 patent, which resulted in cancellation of all claims of that patent. For the reasons discussed below with respect to the merits, the asserted combination of Neibauer and Cheng sufficiently teaches claim 1. Given the Petition’s detailed analysis, including the supporting testimony of Dr. Madisetti, and the sparse record developed by the Office addressing Neibauer and Cheng during prosecution of the ’427 patent, Petitioner has shown sufficiently that the Office materially erred when it found that the prior art does not teach claim 1.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA.” Prelim. Resp. 17. Petitioner’s description of a person of ordinary skill in the art is consistent with the ’427 patent and the prior art before us and is supported by the testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s description. C. Claim Construction” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Given this preliminary record, we do not see a basis for adopting Patent Owner’s proposed meaning of “uploading” as “data sent from a client to a server.” We do not discern a rationale in the claims or the intrinsic record to include the term “client” within the meaning of “uploading.” Rather, given the current record, we preliminarily determine that the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent and would have been understood by someone of ordinary skill in the art at the time of the claimed invention is “transferring data from an external data source to a set of servers.” This preliminary determination does not preclude the parties from proposing, presenting evidence, or arguing a different meaning for the term “uploading” during trial. To the extent the parties disagree with this preliminary determination, the parties should present their evidence and arguments as permitted by our rules.4 A final determination as to the ordinary and customary meaning of the term “uploading” as it is used in the ’427 patent will be made after the close of all the evidence and after any oral hearing in this matter.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,839,427 - PTAB · Jun 11, 2024 · IPR2024-00250 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that the Neibauer, Ausems, and Cheng combination renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006).” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner that all of the references Petitioner is relying on are the same or substantially the same as references that were before the Office. There is no dispute that Ausems and McElfresh were not considered by the Office. See Prelim. Resp. 8–12; Ex. 1001, code (56). Moreover, we do not agree with Patent Owner that Ausems is substantially the same as Rensin and that McElfresh is substantially the same as Dowling. For example, Petitioner relies on Ausems for a mobile communications device that incorporates a digital camera for recording, storing, and transmitting digital images. Pet. 24. The disclosures of Rensin 3 Petitioner’s citation to “POPR 13 (quoting Dowling, ¶0064)” on page 3 of Petitioner’s Preliminary Reply appears to be an error. Patent Owner addresses Dowling on page 11 of its Preliminary Response. cited by Patent Owner identify a camera as a PDA expansion slot device, but do not disclose expressly that captured images can be stored and transmitted as Ausems does. Compare e.g., Ex. 1006, 2:5–11, 5:17–22 with Ex. 2003, 2:2–21. We agree with Petitioner that Ausems was thus more relevant to the challenged claims, and more applicable to a prior art reference such as Neibauer, that disclose the ability of the user to upload photos to a remote server. Petitioner also relies on McElfresh for its teaching of selecting and delivering advertisements and integrating those advertisements with other content on the same webpage. See Pet. 52–60. For example, Petitioner describes how McElfresh’s “ad server or Rad Server 112 ‘performs the overall function of gathering the necessary information regarding a particular ad (or set of ads) and the particular user and generating a set of ads which have been optimized for placement on a webpage,’ based on (among other things) calculated click-through-percentage rates.” Pet. 55 (quoting Ex. 1014, 6:42–48). In contrast, Dowling’s disclosure cited by Patent Owner4 describes how a user may log into “a geographically controlled web site and configures the packet filter to display information related to a user’s needs,” such that that when the user drives along a mall, “a web page comes up and provides directions to the shopping mall and optionally provides an inside map of the mall to include directions to the desired store.” Ex. 3001 ¶ 64; 4 Patent Owner cites to Exhibit 2004 as Dowling (US 2005/0177645). Prelim. Resp. 11. However, Exhibit 2004 is U.S. Patent App. 2005/0171645, directed to a “Household Energy Management System,” listing inventors as Oswald and Tamsett. See Ex. 2004, codes (10), (54), 76. Dowling appears to have been filed as Exhibit 1030, not Exhibit 2004. Prelim. Resp. 11 (citing Ex. 2004 ¶ 64). Dowling’s disclosure is substantially different from McElfresh’s teaching of using a server to select and integrate particular advertisements onto a webpage. We have reviewed the portions of Rensin and Dowling cited by Patent Owner and do not see substantially the same structures or functionality relied upon by Petitioner in Ausems or McElfresh.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art: would have possessed a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices. Pet. 5–6 (citing Madisetti Decl. ¶¶ 14–18). Patent Owner states “[f]or purposes of this Response, [Patent Owner] applies Petitioner’s characterization of a POSITA [(“person having ordinary skill in the art)].” Prelim. Resp. 16. We regard Petitioner’s definition as consistent with the ’348 patent and the prior art before us and supported by testimonial evidence. Therefore, for the purpose of this Decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“An obviousness determination “does not require that a particular combination must be the preferred, or the most desirable, combination described in the prior art in order to provide motivation for the current invention.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004). Oftentimes, the strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994–995 (Fed. Cir. 1983). Indeed, the Federal Circuit has repeatedly held that an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the “improvement” is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal—and even common-sensical—we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references. Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368 (Fed. Cir. 2006). Dr. Madisetti articulates this very rationale by testifying that [t]he techniques of Cheng would have provided a distinct technological advantage by allowing the club system described in Neibauer to be delivered to mobile devices by converting web pages provided via Neibauer, thus obviating the need for the Yahoo! server to generate multiple different versions of those web pages (including potentially multiple mobile versions based on different mobile device and browser types), thus making it considerably simpler to provide club functionality to the web browsers of mobile devices. Ex. 1002 ¶ 106.” slip op. at 25
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,922,348 - PTAB · Jun 11, 2024 · IPR2024-00249 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19, 21, and 22 on all asserted grounds after finding a reasonable likelihood that claim 1 was obvious over Neibauer, Ausems, Cheng, and Squibbs.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“relying on are the same or substantially the same as references that were before the Office. In particular, there is no dispute that neither Harvey nor Ausems was considered by the Office, nor that Harvey is not substantially the same as any reference that was before the Office. Prelim. Resp. 9–10; Prelim. Reply 3. Further, we do not agree with Patent Owner that Ausems is substantially the same as Rensin. Specifically, Petitioner relies on Ausems to teach the incorporation of a camera into a mobile device, permitting the recording, storage, and transmission of digital images. Pet. 23; Prelim. Reply 3. We have reviewed the section of Rensin to which Patent Owner directs us (Ex. 2003, 2:2–21), and we do not see substantially the same functionality. Although Rensin teaches that “PDA expansion slots may be used to enhance the PDA capabilities with a digital camera,” Patent Owner does not explain, and it is not clear from our review of Rensin, that Rensin discloses the use of the mobile device to transmit the images recorded by the camera. Ex. 2003, 2:2–21. Accordingly, we are not persuaded that Rensin is substantially the same as Ausems. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the current record, a person of ordinary skill in the art would have combined the teachings of Ausems with those of Neibauer in the manner described above. See Ex. 1002 ¶¶ 114–117. Specifically, a person having ordinary skill in the art would have combined Ausems’s ability to share photos captured by a mobile device with Neibauer’s Yahoo! club in order to “dramatically expand[] the universe of image data that the club based on the current record, a person of ordinary skill in the art would have had a reasonable expectation of success. Id. ¶ 117. Accordingly, on the present record, the combination of Neibauer and Ausems teaches limitation 1a.” slip op. at 22
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or similar field, with two years of experience in developing and implementing network-based computer systems that interact with mobile devices, such as systems for storing and retrieving information over the Internet or communicating using the Web using wireless mobile devices.” Pet. 5–6 (citing Ex. 1002 ¶¶ 14–18). At this stage, Patent Owner “applies Petitioner’s characterization of a person of ordinary skill in the art.” See Prelim. Resp. 15. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed and implement the teachings of the ’578 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Madisetti. See Ex. 1002 ¶¶ 14–18.8” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not believe express claim construction is necessary at this time.” Pet. 8. Petitioner also discusses various claim construction arguments made in the district court proceeding. See id. at 25–27, 65–66. At this stage, Patent Owner agrees with Petitioner that “no express constructions are required.” Prelim. Resp. 16. 8 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. claim terms.9 See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,619,578
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.