• Google LLC v. Voip-Pal.Com, Inc.Institution denied
  PTAB · Dec 19, 2022 · IPR2022-01074 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because the petition did not show Teodosiu disclosed the required location identifier, and the proposed combinations did not remedy that deficiency.

  RulingsInstitution decision

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

    “In summary, we determine that Petitioner has not shown that the cited art discloses all the limitations of any challenged claim and we deny institution on this basis. III. CONCLUSION On the record before us, we conclude that there is not a reasonable likelihood that the Petitioner would prevail with respect at least one of the claims challenged in the Petition. Therefore, we do not institute inter partes review on any claims or any challenge to the claims of the ’721 patent.” slip op. at 25

  • Skill levelSkill level petitioner adoptedOther

    “[a] person of ordinary skill in the art as of the claimed priority date of the ’721 patent . . . would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field along with at least two years of work experience in the field of networking.” Pet. 5–6 (citing Ex. 1002 ¶¶ 19–21). Petitioner further contends “[m]ore education can complement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 19–21). Patent Owner does not address the level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art because it is consistent with the ’721 patent and the asserted prior art. slip op. at 10

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

    “2018, “[claims] of a patent . . . shall be construed using the same claim construction standard that would be used to construe the [claims] in a civil action under 35 U.S.C. § 282(b), including construing the [claims] in accordance with the ordinary and customary meaning of such claims as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2018); see also Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005). We construe only terms that are in controversy and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, construe any claim terms in order to make this decision.” slip op. at 10

  • Expert testimonyPetitioner expert discountedPatent owner expert creditedDecided for patent owner

    “the Mir Declaration. See Pet. 20 (citing Ex. 1002 ¶¶ 87–91). We have considered the Mir Declaration and determine that it does not support finding that Teodosiu discloses transmitting “a location identifier identifying a geographical location of the wireless device” as recited in each independent claim of the ’721 patent by disclosing transmission of the mobile device’s phone number. The Mir Declaration states: “[a] person of with a device’s phone number can identify an area (e.g., location) in which the device may be located.” Ex. 1002 ¶ 89. We agree with this statement to the extent that we agree that the device’s phone number could possibly identify an area or location in which the device might be located. But, we do not agree with Dr. Mir’s conclusion that “a person of ordinary skill in the art would have understood that the mobile device 110 phone number [as disclosed in Teodosiu] includes [a] ‘location identifier,’ as claimed.” Id. ¶ 90. Dr. Mir fails to adequately explain how or why the area code of a mobile device’s phone number is a “location identifier identifying a geographical location of the wireless device.”” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,880,721
• Cisco Systems, Inc. v. XR Communications, LLC D/B/A Vivato TechnologiesInstitution denied
  PTAB · Nov 28, 2022 · IPR2022-00958 · APJ Barbara A Parvis · IPR · Institution

  The Board denied institution because Cisco did not show a reasonable likelihood that claims 15–22 and 30–35 were obvious over Kasami.

  RulingsInstitution decision

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

    “we agree with Patent Owner that Petitioner does not show sufficiently that Kasami teaches element 15B.2 and specifically, at least the first, second, and third channels. Petitioner relies on a modification of the first embodiment of Kasami. Pet. 15–51. As discussed above, Kasami’s first embodiment illustrated in Figure 1 includes a single access point, i.e., “Access point 1.” Ex. 1005, Fig. 1. Kasami describes that “access point 1 can communicate with the plurality of stations 4-1 and 4-3 via the substantially same channel or adjacent channel.” Id. at 5:63–66. As discussed above, Petitioner does not rely on the adjacent channel but instead, relies on description pertaining to another embodiment in Kasami and general knowledge of a person having ordinary skill in the art. Pet. 15–51. Petitioner does not provide sufficient reasoning to modify the Figure 1 embodiment of Kasami in accordance with teachings relating to Kasami’s other embodiment or the general knowledge of a person having ordinary skill in the art. Id. at 10–51. Petitioner also relies on the testimony of its expert Dr. Jeffay to map Kasami’s antenna beams 3-1 to 3-3 such that according to Petitioner each of antenna beams 3-1 to 3-3 is part of a first, second, and third access point, respectively, (id. at 21–22) and also is a first, second, and third receive channel, respectively (id. at 36). Dr. Jeffay’s testimony cites as support a reference describing frequency channels, spatial channels, and use of different channels for communication with mobile systems. See, e.g., Ex. 1003 (citing Ex. 1011, 1:35–39, 1:43–47, 12:33–38, 13:26–29). Neither Dr. Jeffay’s testimony nor the other reference remedies the deficiency in the 1 so as to achieve the mapping set forth by Petitioner to meet the elements recited in claim 15. Additionally, Petitioner may not rely on Dr. Jeffay’s testimony alone for element 15B.2. Testimony cannot take the place of disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. See Consolidated Trial Practice Guide (“Consolidated Practice Guide”) at 36; see also 84 Fed. Reg. 64,280 (Nov. 21, 2019). More specifically, the Consolidated Practice Guide sets forth the following: Expert testimony, however, cannot take the place of a disclosure in a prior art reference, when that disclosure is required as part of the unpatentability analysis. For example, because “[a] claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference,” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987), a petitioner asserting anticipation cannot rely on its expert to supply disclosure of a claim element that is not expressly or inherently present in the reference. Similarly, in an obviousness analysis, conclusory assertions from a third party about general knowledge in the art cannot, without supporting evidence of record, supply a limitation that is not evidently and indisputably within the common knowledge of those skilled in the art. K/S Himpp v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365 (Fed. Cir. 2014). Furthermore, because an inter partes review may only be requested “on the basis of prior art consisting of patents or printed publications,” 35 U.S.C. § 311(b), expert testimony cannot take the place of disclosure from patents or printed publications. In other words, expert testimony may explain “patents and printed publications,” but is not a substitute for disclosure in a prior art reference itself. Consolidated Practice Guide at 36. For the reasons given, we determine that Petitioner has not shown sufficiently that Kasami teaches each recitation of independent claim 15.” slip op. at 23

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “we agree with Patent Owner that Petitioner does not show sufficiently that Kasami teaches element 15B.2 and specifically, at least the first, second, and third channels. Petitioner relies on a modification of the first embodiment of Kasami. Pet. 15–51. As discussed above, Kasami’s first embodiment illustrated in Figure 1 includes a single access point, i.e., “Access point 1.” Ex. 1005, Fig. 1. Kasami describes that “access point 1 can communicate with the plurality of stations 4-1 and 4-3 via the substantially same channel or adjacent channel.” Id. at 5:63–66. As discussed above, Petitioner does not rely on the adjacent channel but instead, relies on description pertaining to another embodiment in Kasami and general knowledge of a person having ordinary skill in the art. Pet. 15–51. Petitioner does not provide sufficient reasoning to modify the Figure 1 embodiment of Kasami in accordance with teachings relating to Kasami’s other embodiment or the general knowledge of a person having ordinary skill in the art. Id. at 10–51. Petitioner also relies on the testimony of its expert Dr. Jeffay to map Kasami’s antenna beams 3-1 to 3-3 such that according to Petitioner each of antenna beams 3-1 to 3-3 is part of a first, second, and third access point, respectively, (id. at 21–22) and also is a first, second, and third receive channel, respectively (id. at 36). Dr. Jeffay’s testimony cites as support a reference describing frequency channels, spatial channels, and use of different channels for communication with mobile systems. See, e.g., Ex. 1003 (citing Ex. 1011, 1:35–39, 1:43–47, 12:33–38, 13:26–29). Neither Dr. Jeffay’s testimony nor the other reference remedies the deficiency in the 1 so as to achieve the mapping set forth by Petitioner to meet the elements recited in claim 15.” slip op. at 23

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “Discretion Under 35 U.S.C. § 314(a) Relying on the framework from Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”), Patent Owner asserts we should exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review based on the district court proceedings. Prelim. Resp. 22–40. We need not address Patent Owner’s contentions concerning discretionary denial under § 314(a) because Petitioner has not established a reasonable likelihood of prevailing in demonstrating the unpatentability of any challenged claim of the ’939 patent.” slip op. at 26

  • Skill levelSkill level board ownOther

    “We find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal. With that exception, considering the subject matter of the ’939 patent, the background technical field, and the asserted prior art, we otherwise agree with Petitioner’s proposed qualifications for an ordinary level of skill. Petitioner’s proposed definition is consistent with the level of skill reflected in the Specification of the ’939 patent and the asserted prior art reference. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 4 Patent Owner does not present objective evidence of nonobviousness. one of ordinary skill in the art, with the “at least” phrase omitted.” slip op. at 9

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,289,939
• E. & J. Gallo Winery v. Vineyard InvestigationsInstitution denied
  PTAB · Oct 17, 2022 · IPR2022-00792 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution because Petitioner did not show that the cited art taught or suggested the per-plant emitter limitations in claims 1–48.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Id. at 20–21.17 Thus, Petitioner equates “sprinkler head” in Miller to “emitter” as recited and “adjacent each tree in the region” in Miller to “associated with . . . one of the plants” as recited. And, Petitioner concludes that an ordinarily skilled artisan would have understood Miller’s disclosure of a “sprinkler head adjacent each tree” to teach that “Miller’s feed lines and controller could be readily configured to operate a sprinkler head on a per plant basis.” See Pet. 21. Petitioner does not explain how or why placing a sprinkler head adjacent each tree means that the feed lines and controller 16 “[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1075 (Fed. Cir. 2015) (emphasis added). 17 In addition to the evidence from Miller referred to above, Petitioner also cites paragraphs 84–90 of the Declaration of Gill Tsouri, Ph.D. See Pet. 19, 22 (citing Ex. 1002 ¶¶ 84–90). However, paragraphs 84–90 of the Tsouri Declaration merely consist of verbatim copies of passages in the Petition and the contention that Miller thus teaches this element. See especially Ex. 1002 ¶ 87 (consisting of a verbatim copy of the paragraph quoted above from the Petition). We do not find the testimony in the Tsouri Declaration to be persuasive or helpful to our analysis. Petitioner fails to show how or why Miller discloses a system that can operate a sprinkler head on a per plant basis which is Petitioner’s basis for contending Miller teaches “each emitter is associated with . . . one of the plants” as recited in claim 1.” slip op. at 13

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

    “Because we deny institution on the merits, we do not reach Patent Owner’s arguments as to discretionary denial under § 325(d).” slip op. at 17

  § 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,645,881
• Juniper Networks, Inc. v. Correct Transmission, LLCNo claims unpatentable
  PTAB · Oct 3, 2022 · IPR2021-00682 · APJ Stephen E Belisle · IPR · Final written decision

  Claims 1–7, 9, 12–16, 27, and 28 were not shown unpatentable over Kuo and Balakrishnan or Casey and Balakrishnan because reasonable expectation of success was not established.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art also is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Considering the subject matter of the ’465 patent, the background technical field, the prior art, and Petitioner’s unopposed proposed definition of the skilled artisan, (a) we apply the level of skill set forth above, which also is consistent with the testimony of Dr. Yang (Ex. 1003 ¶¶ 64–68); and (b) we determine this would have provided a sufficient level of skill in light of the technology at issue in the ’465 patent and prior art.” slip op. at 12

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

    “C. Claim Construction Neither Petitioner nor Patent Owner proposes any claim terms for construction. Pet. 8 (“Juniper construes each of the ’465 claim terms as having its ordinary and customer meaning.”); PO Resp. 11 (“Patent Owner submits that no claim terms require construction beyond their plain and ordinary meaning.”). We do not find that the express construction of any term is necessary for this decision. See 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.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “In particular, we determine that Petitioner has not proven, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Neither the Petition nor the declaration from Dr. Yang that accompanied the Petition analyzed whether the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. Pet. 49–68; Ex. 1003 ¶¶ 52–63, 186–229; see generally Pet. 1–84; Ex. 1003. Dr. Yang did not submit a second declaration in this proceeding. Pet. Reply (Exhibit List). Nevertheless, Petitioner argues that it proved the requisite reasonable expectation of success with the evidence that it cited in the Petition for other issues (e.g., motivation to combine) including Dr. Yang’s declaration testimony on those issues, Dr. Yang’s cross-examination testimony, Dr. Akl’s cross-examination testimony, and additional evidence that Petitioner cited in its Reply. Pet. Reply 8–11. But the expert testimony and other evidence cited by Petitioner fail to prove, by a preponderance of the evidence, that the skilled artisan would have had a reasonable expectation of success in provisioning Kuo to periodically synchronize forwarding tables. We turn first to the Petition itself.” slip op. at 21

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “Ex. 1003 ¶ 225 (cited by Pet. 65–67 n.191, which in turn is cited by Pet. Reply 8–10 n.28); see Ex. 1003 ¶¶ 217–224. To the extent that this testimony was intended to evidence a reasonable expectation of success, rather than a reason or motivation to modify Kuo (or combine Kuo and Balakrishnan) as expressly stated in the Petition, such testimony is conclusory. Dr. Yang refers to “predictable results” in the abstract, without explaining what those “results” are, how they relate to the invention of claim 1, or how such “results” may evidence the ordinarily skilled artisan (not an expert) having a reasonable expectation that provisioning Kuo’s disclosed system to periodically synchronize forwarding tables would be successful. Moreover, even if “Kuo’s network provides multipoint connectivity similar to Balakrishnan” (Ex. 1003 ¶ 225 (emphasis added)), this is merely a high-level feature or goal of many such networks and does not itself show why the skilled artisan would have had a reasonable expectation of success in modifying Kuo’s particular network to periodically synchronize forwarding tables given the particular design of Kuo’s system, and given the complex nature of virtual private local area networking technology (and computer networking technology generally). Thus, we do not find this testimony persuasive. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014, 1022 (Fed. Cir. 2017) (the Board is “not required to credit [a party’s] expert evidence simply because [the party] offered it”); TQ Delta, LLC v. CISCO Sys., Inc., 942 F.3d 1352, 1359 (Fed. Cir. 2019) (“This court’s opinions have repeatedly recognized that conclusory expert testimony is inadequate to support an obviousness determination on substantial evidence review.”); MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed. Cir. 2015).” slip op. at 28

  Patent outcomesUS 7,283,465 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,283,465
• Aviagames, Inc. v. Skillz Platform Inc.Institution denied
  PTAB · Aug 4, 2022 · IPR2022-00531 · APJ Terrence W Mcmillin · IPR · Institution

  Institution was denied because the Petition failed to show a reasonable likelihood of proving any challenged claim obvious over the asserted grounds.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 10

  • BurdenDenied

    “teaches the “unique match number” as recited in claim 1 of the ’564 patent.11 Petitioner fails to explain what relationship, if any, the “tournament game identifier number[ ]” bears to the stream of pseudo random number seeds allegedly taught by Halliburton. Because each tournament in Halliburton has an identifier number does not support the conclusion that the “tournament game identifier number[ ]” characterizes the stream of pseudo random number seeds or otherwise supports concluding that the “tournament game identifier number[ ]” is a “unique match number” as recited. The Petition provides no support for concluding that Halliburton’s depiction of a “tournament game identifier number[ ]” teaches a “unique match number” as recited in claim 1 of the ’564 patent. We determine that the Petition fails to show that Halliburton teaches or suggests the first limitation of claim 1 of the ’564 patent.” slip op. at 17

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “11 Paragraph 235 of Exhibit 1003 (Declaration of Stacy Friedman) is cited in the Petition without any description or explanation of the testimony or how or why it supports the conclusions reached. Nonetheless, we have considered this cited testimony which provides: “Halliburton’s FIG. 6 shows that its tournament IDs are for the decks provided and consequently, the claim language is met.” Ex. 1003 ¶ 235. We find this testimony to be conclusory and not helpful to understand how Halliburton’s tournament IDs meet the claim language. 37 C.F.R. § 42.65(a) provides, “[e]xpert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We accord little or no evidentiary weight to the cited paragraph of Exhibit 1003.” slip op. at 17

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “[a] person of ordinary skill at the time of the alleged priority date of the ’564 Patent would have had at least a bachelor’s degree in computer science, computer engineering, or electrical engineering (or equivalent work experience) and would have had at least two years or more additional of practical experience specifically with designing and developing electronic gaming systems. Pet. 20–21 (citing Ex. 1003 ¶¶ 22–24). Patent Owner states that “[f]or purposes of this preliminary response only, [Patent Owner] does not dispute this definition.” Prelim. Resp. 8. Petitioner’s undisputed proposal appears consistent with the technology described in the Specification and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.” slip op. at 10

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,649,564
• Petitioner v. Unification Technologies LLCSome claims unpatentable
  PTAB · Jul 8, 2022 · IPR2021-00344 · APJ Justin T Arbes · IPR · Final written decision

  Claims 1–5 and 8–12 are unpatentable as obvious over Suda, and claims 22–26 are not shown unpatentable because their scope cannot be determined with reasonable certainty.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “patent, we look to “1) the types of problems encountered in the art; 2) the prior art solutions to those problems; 3) the rapidity with which innovations are made; 4) the sophistication of the technology; and 5) the educational level of active workers in the field.” Ruiz v. A.B. Chance Co., 234 F.3d 654, 666–667 (Fed. Cir. 2000). “Not all such factors may be present in every case, and one or more of them may predominate.” Id.” slip op. at 8

  • Prior constructionPrior construction adoptedDecided for petitioner

    “Construction Order construing various terms of the ’658 patent: Claim Term Construction An identifier that can be associated with a physical address on a storage “logical identifier” device for identifying data stored at the physical address “logical identifier [that/in Indefinite the index] is empty” “data associated with the Not indefinite; plain and ordinary logical identifier [has meaning been/is] erased” Not indefinite; not subject to §112(f); “marking module” plain and ordinary meaning Not indefinite; not subject to §112(f); “storage module” plain and ordinary meaning “instructions configured to . . . recording persistent Not indefinite; not subject to §112(f); data . . . in response the plain and ordinary meaning indication” Ex. 2006, 2–3. We address three claim interpretation issues. First, in the Decision on Institution, based on the record at the time, we agreed with and adopted the district court’s construction of “logical identifier.” Dec. on Inst. 11–12. The parties agree with that construction. See PO Resp. 19; Reply 3. Based on the full trial record, we interpret “logical identifier” in the same manner as the district court.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Not reached

    “No other claim terms require interpretation to decide the issues presented during trial. See Nidec Motor Corp. v. Zhongshan Broad Ocean construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe [a particular claim limitation] where the construction is not ‘material to the . . . dispute.’” (citation omitted)).” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner

    “Third, with respect to the “module” and “instructions” terms listed above, neither party argues that the terms are means-plus-function limitations under 35 U.S.C. § 112, sixth paragraph, and the district court construed them not to be means-plus-function limitations. See PO Resp. 18–19; Reply 3–4; Ex. 2006, 2–3. We presume that the terms are not means-plus-function limitations because they do not use the word “means” and find no basis on the record before us to conclude otherwise. See Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022) (“Because invoking § 112 ¶ 6 is typically a choice left to the claim drafter, we presume at the first step of the analysis that a claim limitation is subject to § 112 ¶ 6 when the claim language includes the term ‘means.’ . . . The inverse is also true—we presume that a claim limitation is not drafted in means-plus-function format in the absence of the term ‘means.’ . . . [T]his presumption is rebuttable [and] can be overcome if a challenger demonstrates that the claim term ‘fails to recite sufficiently definite structure.’”) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015)). No other claim terms require interpretation to decide the issues” slip op. at 12

  Patent outcomesUS 8,762,658 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,762,658
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · May 11, 2022 · IPR2022-00050 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution on claims 1–30 because Petitioner did not show a reasonable likelihood that the asserted references qualified as prior art.

  RulingsInstitution decision

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

    “In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356,1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 15

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner

    “But, even accepting these premises, we disagree with the conclusion Petitioner asks us to draw from them. In particular, Petitioner appears to contend that we should find that the ’974 application does not provide written description support for the claims of the ’638 patent merely because the scope of the claims includes a configuration that is not expressly described in that document. See Pet. 15–16, 22. But this reflects a misunderstanding of the law—a claim can be broader than the embodiments disclosed. See, e.g., Rexnord, 274 F.3d at 1344 (“An applicant is not required to describe in the specification every conceivable and possible future embodiment of his invention.”); see also Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1582 n.7 (Fed. Cir. 1996) (noting that a claim may be “literally infringed by undisclosed embodiments” and yet sufficiently supported); Application of Smythe, 480 F.2d 1376, 1384 (C.C.P.A. 1973) (“We cannot agree with the broad proposition . . . that in every case where the description of the invention in the specification is narrower than that in the claim there has been a failure to fulfill the description requirement in section 112.”).” slip op. at 22

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

    “D. Obviousness Grounds Petitioner contends that the subject matter of claims 1–30 of the ’638 patent would have been obvious over various combinations of Oakes-I, Oakes-II, Medina, and Roach (collectively, “the asserted references”). Pet. 5, 32–100. Petitioner argues that the asserted references are prior art because the claims of the ’638 patent are not entitled to a priority date earlier than July 28, 2017. Id. at 4–5, 11–29. Patent Owner contends that Petitioner fails to establish a reasonable likelihood of success because Petitioner fails to sufficiently show that the asserted references qualify as prior art. Prelim. Resp. 18–59. Having reviewed the parties’ arguments and evidence, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that the asserted references are prior art,8 and as a result, Petitioner fails to sufficiently show that any claim would have been unpatentable based on the asserted references.” slip op. at 16

  • PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted

    “In the first Joint Motion to Seal, the parties request entry of a Protective Order that is substantially the same as the Board’s Default Protective Order (see Consolidated Trial Practice Guide16 at 107–122 (App. B, Protective Order Guidelines and Default Protective Order)). Paper 9, 2.17 The parties also request sealing of Exhibit 2006 and sealing of portions of the Preliminary Response relating to that exhibit. Id. at 2–3. The portions of the Preliminary Response (Paper 11) requested to be sealed can be identified from the redacted version of the Preliminary Response filed as Paper 12. Based on the representations in the Joint Motion to Seal (Paper 9), the parties have shown good cause for entering the Protective Order and for sealing Exhibit 2006 and the identified portions of the Preliminary Response.” slip op. at 37

  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• Vmware, Inc. v. Cirba IP Inc.All claims unpatentable
  PTAB · May 4, 2022 · IPR2021-00008 · APJ Russell E Cass · IPR · Final written decision

  Claims 1–33 are unpatentable: claims 1–5, 9–16, 20–27, and 31–33 are anticipated by Power, and claims 1–33 are obvious over Power and Kerr.

  RulingsFinal written decision

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

    “As discussed below, we find that all of the challenged claims have been shown to be unpatentable based on Grounds 1 and 2 involving Power and/or Power and Kerr. See §§ II.D, II.E, infra. Therefore, we need not decide whether the challenged claims are also unpatentable based on Ground 3 involving Van Hoose and Le. Because the parties’ dispute concerning the terms “N-to-1 compatibility analysis” and “N-by-N compatibility analysis” relates to Ground 3, and is not necessary to resolve Grounds 1 and 2, we need not expressly construe these terms for purposes of this Decision, and decline to do so. See Nidec, 868 F.3d at 1017.” slip op. at 9

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

    “Based on the full trial record, we agree with Petitioner that “evaluating one or more source systems against other source systems” should not be construed to require “directly” comparing source systems with other source systems. First, there is nothing in the plain meaning of the claim language itself that requires a “direct” comparison. The dictionary definitions relied on by Patent Owner define “against” as “compared or contrasted with,” which does not require that the comparison be “direct.” Ex. 2016, 23; Ex. 2017, 63. The dictionary’s example of “profits are up [against] last year,” is only one example, and also does not necessarily require a direct comparison because, as Petitioner points out, by sorting profits over the last five years, one might see that this year’s profits are ranked first and last year’s are last. Pet. Reply, 5–6. The ’492 patent specification also supports construing “evaluating . . . against” as not restricted to only “direct” comparisons. The specification uses the term “directly against,” which implies that the term “against” is not limited to only “direct” comparisons. Ex. 1001, 14:20–22. See Philips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (“[T]he claim in this case refers to ‘steel baffles,’ which strongly implies that the term ‘baffles’ does not inherently mean objects made of steel.”). Thus, the inventors knew how to refer to “direct” comparisons, and chose not to do so in the claims.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the alleged invention “would have at least a bachelor’s degree in computer science, computer engineering, or electrical engineering and 2–3 years of experience related to administering distributed computing environments,” and that a “master’s degree or higher is acceptable in place of work experience.” Pet. 13 (citing Ex. 1002 ¶ 21). In the Preliminary Response, Patent Owner did not object to Petitioner’s proposed level of ordinary skill, but reserved the right to dispute it if an inter partes review was instituted. Prelim. Resp. 13. In our Institution Decision, we adopted Petitioner’s assessment of the level of ordinary skill in the art, determining that it is consistent with the ’492 patent and the asserted prior art of record. Inst. Dec. 12. During the trial, Patent Owner stated that it does not offer a competing definition of a person of ordinary skill in the art for purposes of this proceeding. PO Resp. 10. Based on the full trial record, we adhere to the level of ordinary skill set forth in our Institution Decision.” slip op. at 19

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Based on the full trial record, we find that Power’s “sorting” and “ordering” of source candidates discloses “evaluating one or more source systems against other source systems” as claimed. As discussed in Section II.A.3 above, we agree with Petitioner that “evaluating one or more source systems against other source systems” does not require a “direct” comparison between source systems. Given this understanding, we find that Power’s sorting of source candidates based on “future state criteria” evaluates source candidates against each other. As discussed above, Power lists the following three examples of “future state criteria” ranked by priority: PRIORITY 1: Lease expiration or max depreciation > 1 year away PRIORITY 2: Peak utilization > 50% capacity PRIORITY 3: Peak utilization + Projected growth < 95% capacity Ex. 1004, 12:16–23. In this analysis, source candidates are “identified in order of the priority of the criteria that they do (or do[] not[)] meet.” Id. at 12:35–37. Thus, “hardware devices having less than one year remaining on their leases, or less than one year until they are fully depreciated, are the first to be identified as source candidates and paired to target candidates.” Id. at 12:37–40. “Next, any remaining hardware devices whose peak utilization is less than fifty percent (50%) capacity are identified as source candidates and paired to target candidates.” Id. at 12:40–43. “Finally, any remaining hardware devices whose peak utilization and projected growth equals more than ninety-five percent (95%) of capacity are identified as source candidates and paired to target candidates.” Id. at 12:43–47. We find that this process “evaluat[es] one or more source systems against other source systems” because it takes a group of source systems and compares them using a common set of criteria as a reference point to rank them in priority order. The fact that a common reference criteria is used for the evaluation instead of a a 1-to-1 comparison of each source system against each other source system does not mean that Power does not compare source systems with each other. For example, measuring the weight of each of a set of items using a scale, placing the items into buckets based on weight ranges, and then ordering the items by weight by emptying the buckets in order from the heaviest to the lightest would indirectly” slip op. at 27

  Patent outcomesUS 10,523,492 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,523,492
• PNC Bank, N.A. v. United Services Automobile AssociationInstitution denied
  PTAB · Apr 27, 2022 · IPR2022-00049 · APJ Terrence W Mcmillin · IPR · Institution

  The Board denied institution for claims 20 and 22 because Petitioner did not show a reasonable likelihood that the asserted combinations rendered them obvious.

  RulingsInstitution decision

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

    “IV. CONCLUSION The Petitioner has not persuasively established that a skilled artisan would have been motivated to combine the cited references so as to render any of the challenged claims unpatentable. Accordingly, we determine that Petitioner has not demonstrated a reasonable likelihood of showing at least one of the claims challenged in the Petition would have been obvious. V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), no inter partes review as to any claim of the ’638 patent is instituted; and” slip op. at 26

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable

    “Pet. 25–27 (emphasis added) (alterations in original). Although this passage is somewhat lengthy, the only reasons provided for combining the relevant teachings of Garcia and Byrne are “to avoid wasting communications resources and adding delays,” “avoid wasting resources and adding delays,” and “reducing wasteful network transmission and delays.” See id. However, the only argument as to the existence of the alleged motivating waste and delay is: “Garcia sends images by ‘a mobile telephone communications network, for example a GSM/GPRS network. . . A POSITA would have known that such networks are bandwidth and resourceconstrained, and that communications over such networks take[ ] time.” Id. at 25 (quoting Ex. 1103, 11:21–12:1). In the Petition, there is no explanation or reasoning to support concluding, based on Garcia’s statement that images are sent using a mobile telephone communications network, that a skilled artisan would recognize waste and delay even if such networks are bandwidth and resource-constrained and that communications over such networks take time. See id. And, there is no explanation or reasoning for concluding that a skilled artisan would recognize that to “check for errors before the submitting” in the manner taught by Byrne would help alleviate waste and delay in Garcia’s system. The only articulated rationale to combine in the Petition is a simple, unelaborated assertion that a skilled artisan would have known that “networks are bandwidth and resource-constrained” and “communications over such networks take time.” This assertion is too general10 and conclusory to accorded much weight and is inadequate to support the finding of rationale to combine. There is no elaboration in the Petition as to what is meant by this sentence. The Petition fails to explain what pertinent knowledge a skilled artisan would have had and how exactly this would have motivated the combination of the relevant teachings of Garcia and Byrne.” slip op. at 20

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

    “Under the standard set forth in Phillips v. AWH Corp., 415 F.3d 1303, 1312– 19 (Fed. Cir. 2005) (en banc), claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. See Thorner v. Sony Comput. Ent. Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). There is a “heavy presumption,” however, that a claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (citation omitted). We determine we need not explicitly construe any claim terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“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 14

  • PTAB / AIA Trials › Real party in interest / privityNot reached

    “Preliminary Response and Exhibit 2006); Paper 13 (relating to the Reply); and Paper 17 (relating to the Sur-reply). In each of these motions, the parties seek to protect as confidential certain information that relates to the issue of whether Petitioner has properly identified all the real parties in interest in its Petition. See 35 U.S.C. § 312(a)(2). As we deny the Petition on the merits and do not grant the request to institute an inter partes review, the issue of identification of the real parties in interest to this proceeding is moot. Therefore, we do not reach the arguments and evidence of the parties relating to whether Petitioner identified all the real parties in interest in the Petition, and we make no reference in this Decision to the documents and information that the parties seek to protect as confidential.” slip op. at 24

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,402,638
• Sharkninja Operating LLC / Sharkninja Management LLC et al. v. Irobot CorporationAll claims unpatentable
  PTAB · Apr 11, 2022 · IPR2020-01639 · APJ Jason W Melvin · IPR · Final written decision

  Claims 1–21 are unpatentable: claims 1–7, 10–18, and 20 as obvious over Köchel, and claims 8, 9, 19, and 21 as obvious over Köchel and Windorfer.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner proposes that a person of ordinary skill “would have had at least a bachelor’s degree in physics, electrical engineering, mechanical engineering, computer science, or a related discipline, and would have had at least one year of experience in the design and implementation of robotics and embedded systems, or some other equivalent combination or education and experience.” Pet. 4–5 (citing Ex. 1002 ¶ 19). Patent Owner does not dispute this definition of a person of ordinary skill. See generally PO Resp. We adopt Petitioner’s proposed level of ordinary skill as it appears to be consistent with the level of skill reflected by the specification and the asserted prior art.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “Initially, we are mindful of the claim language itself. The limitation at issue recites “altering a direction of motion of the autonomous robot such that the autonomous robot is directed away from the at least one open edge.” Ex. 1001, 18:8–10. That language uses “such that” to indicate a direct relationship between “altering a direction of motion” and the robot being “directed away” from the detected edge—the direction must be altered in a manner that directs the robot away from the edge. Thus, the plain claim language is consistent with a direction change alone being sufficient to satisfy the “directed away” limitation. According to Patent Owner, the specification supports a requirement to move away from the edge in addition to turning away from the edge. PO Resp. 13. Patent Owner relies on a description that the robot “may rotate right before proceeding.” Ex. 1001, 8:66–9:1 (emphasis added). We do not read the specification the same way. The “before proceeding” passage follows a statement that, when sensors on the robot’s two sides detect a surface or elevation change, “Escape Behavior Mode 354 may include a rotation such that a heading of the robot 100 is to the left of a previous travel heading.” Id. at 8:64–66. And following the “before proceeding” sentence, the specification summarizes: “In other words, the controller may act to turn the robot away from a sensed floor surface edge.” Id. at 9:1–3. Patent Owner argues that the reference using “in other words” indicates that turning the robot away from a sensed edge includes proceeding away from the edge. PO Resp. 13. We do not agree, as the preceding examples (turning left and turning right) share only a heading change, not forward motion. Thus, the specification does not support that forward motion is a necessary part of altering the robot’s direction of motion such that it is directed away from a detected edge. Although the intrinsic record appears to support the construction we adopted in the Institution Decision, we need not resolve the precise limit of forward motion required for a robot to be directed away from a detected edge. As discussed below, we are persuaded that Köchel’s disclosures render claim 13 obvious even under a construction that requires some degree of forward motion. Thus, we do not address the parties’ dispute over whether a robot requires more than a direction change to be “directed away” from a detected edge. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 7

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

    “Köchel describes the use of an integrated ultrasonic transducer as merely “preferable” over a separate sender and receiver. Ex. 1005 ¶ 11 (“[I]t is proposed that two ultrasound senders and/or transducers are provided alongside each other. In this regard, separate ultrasound senders and ultrasound receivers may be provided. Preferable, however, is an arrangement per claim 1, where the same ultrasound transducer works as both the ultrasound sender and the ultrasound receiver.”). Indeed, Köchel even claims a separate sender and transducer, supporting that its invention is not limited to an integrated device. Id., claim 18 (“ultrasound floor recognition by means of ultrasound sender (9) and transducer (8)”). Because Köchel discloses its integrated sensor as merely preferable and discloses a separate sender–receiver pair as within the scope of its invention, we do not agree with Patent Owner that modifying Köchel’s robot to use infrared sensors would change its principle of operation. Petitioner makes a persuasive showing, based on Windorfer’s disclosures, that skilled artisans would have considered infrared sensors as an alternative to ultrasonic sensors, and therefore would have had reason to use Windorfer’s infrared sensors in place of Köchel’s ultrasonic sensors. Pet. 65–66, 72; see Ex. 1006 ¶ 14 (disclosing “surface area and/or room detection capability” using “ultrasound and/or infrared sensors”).” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “In particular, Petitioner points to testimony from Patent Owner’s expert demonstrating he did not use a sound basis on which to draw his conclusions. Ex. 1017, 15:10–16:1. We agree that Patent Owner’s expert did not sufficiently support his conclusion that detection latency would allow Köchel’s robot to fully cross a detected edge. Moreover, Patent Owner’s expert testified as to ranges of operating conditions, and Petitioner’s expert conducted simulations using those conditions. See Pet. Reply 4–6. Those simulations show that Köchel’s robot would not fully cross a detected edge. Ex. 1018 ¶¶ 6–12. Patent Owner points to an error in the simulation parameter for travel speed, but presents a corrected simulation that also shows the robot does not fully cross a detected edge. PO Sur-Reply 14–16 (citing Ex. 2072 39:19–42:18; Ex. 2069). Patent Owner argues that Petitioner’s expert, Dr. Cowan, improperly “limit[ed] the simulation to a single set of tightly controlled conditions” (PO Sur-Reply 14–21), for example by averaging five samples, which Köchel discloses as the minimum for a “preferable” approach (id. at 16–17 (citing Ex. 1005 ¶ 8)). We do not agree that Dr. Cowan’s approach was unreasonable or shows an unrealistic view of Köchel. Especially because signal averaging is merely preferred in Köchel, we see no reason that a simulation should average a higher number of samples. It is true that Patent Owner can identify parameters causing a simulated robot to fully cross a detected edge, but the question is whether Köchel discloses a robot that turns without fully crossing the edge, not whether it discloses only that. Stated otherwise, if Köchel discloses a robot that turns without fully crossing the edge when operated in a certain way but does fully cross the edge if configured differently, that satisfies the claim. See ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018) (holding that a reference discloses a device as claimed when it discloses a device that may operate as claimed at least in some configurations). Petitioner submits further that Köchel’s description of a “zigzag” approach is consistent with a robot that stops to turn before proceeding forward on a new heading. Pet. Reply 6–13. In that regard, Petitioner criticizes Patent Owner’s depiction of a gradual turn as inconsistent with Köchel’s teachings. Id. at 7–12. We agree with Petitioner that a sharp turn is consistent with Köchel’s stated goal of thoroughly cleaning a surface. See Ex. 1005 ¶ 7. As Petitioner points out, the gradual turn Patent Owner contends is disclosed (see PO Resp. 28) would leave areas uncleaned. We agree with Petitioner also that the record supports that Köchel uses the term “zig zag” consistently with its ordinary meaning. Ex. 1017, 50:1–6. Although Patent Owner’s expert, Dr. Hooper, asserts that “zig zag” encompasses any back-and-forth movement (Ex. 2066 ¶¶ 72–73; see PO Resp. 31) and cites several references, we find Petitioner’s view of the term more persuasive. The first reference, Lewis, specifically defines its zig zag as a sinusoidal function. Ex. 2032, 4. That supports that the term may be applied to such motion, but does not indicate it is the ordinary meaning.” slip op. at 12

  Patent outcomesUS 10,296,007 unpatentable
  Claim construction§ 103 obviousness
  Patents in suitUS 10,296,007

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.