- Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00311 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–22 on all three asserted § 103 grounds, finding a reasonable likelihood of success on each challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Ex. 1003, Clark Decl. ¶ 22). Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. (citing Ex. 1003, Clark Decl. ¶ 22).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“without waiving its right to pursue alternative constructions in any future litigation.” Pet. 8. We understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under the Phillips standard applied by the district courts. 37 C.F.R. §§ 42.100(b), 42.104(b)(4). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,109,375 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · Jun 26, 2024 · IPR2024-00307 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–20 because Datavant showed a reasonable likelihood of prevailing on each asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review).” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“LEVEL OF ORDINARY SKILL IN THE ART Petitioner identifies a person of ordinary skill in the art (“POSA” or “ordinarily skilled artisan”) as having “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer 1 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35 U.S.C. § 103 that became effective on March 16, 2013. The ’651 patent issued from a continuation application filed on May 26, 2017 (Ex. 1001, code (22)), which is a continuation of applications filed on April 22, 2016 and November 18, 2013, and claims priority under 35 U.S.C. § 120 as a continuation-in-part to an application filed on June 30, 2010. Id. at code (63), 1:7–21. Therefore, we apply the pre-AIA version of the statutory basis for unpatentability. 2 U.S. Pat. No. 7,823,207 (Ex. 1005) 3 Murphy and Church, “A Security Architecture for Query Tools Used to Access Large Biomedical Databases,” in Bio*medical Informatics: One Discipline, AMIA 2002 Symposium Proceedings 552–56 (Isaac S. Kohane, ed., 2002) (Ex. 1009) 4 U.S. Pat. Appl. Publ. No. US 2007/0294111 (Ex. 1006) 5 US. Pat. Appl. Publ. No. US 2002/0111833 (Ex. 1007) 6 U.S. Pat. No. 7,519,591 (Ex. 1008) networking and/or data records management.” Pet. 8. Petitioner further states that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. at 8–9 (citing Ex. 1003, Clark Decl. ¶¶ 22–25). The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). For purposes of this Decision, we apply Petitioner’s description of a person of ordinary skill in the art, because it appears commensurate with the subject matter of the ’651 patent and the references.” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“identification of individuals in a search of a medical database using an algorithm that blocks queries returning information from fewer than three patients, thereby preventing disclosure of the patient’s identity. Pet. 14–15 (citing Ex. 1009, 552–53, 555; Ex. 1003, Clark Decl. ¶ 66). Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy because Murphy describes how to use query responses that maintain patient privacy (a stated goal of Evenhaim) using volume to mask patient identity in order to comply with the statistical de-identification provisions of HIPAA. Id. at 15–16 (citing Ex. 1003, Clark Decl. ¶ 68; Ex. 1005, 14:7–13). On the current record, we determine that Petitioner has demonstrated a person of ordinary skill would have had reason to combine the teachings of Evenhaim and Murphy, at least because both are explicitly related to systems that provide medically relevant information in response to a query in compliance with HIPAA requirements concerning data privacy and de-identification of individual patient data.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“l) Conclusion As To Representative Clam 7 In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate a person of ordinary skill would have been motivated to combine the teachings of Evenhaim and Murphy and their combined teachings would have disclosed or suggested all the limitations of claim 7 to a person of ordinary skill in the art. Independent Claims 1 and 14 Independent claim 1 is drawn to a method and recites steps that correspond to the operations recited in claim 7. Independent claim 14 is drawn to a computer readable storage medium storing instructions executable by a processing device to perform operations that correspond to those in claim 7. For the same reasons as those addressed in our discussion of claim 7, we determine that Petitioner has demonstrated that Evenhaim and Murphy teach the limitations of independent claims 1 and 14.” slip op. at 23
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,965,651 - PTAB · May 21, 2024 · IPR2024-00131 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1, 3–8, 14, 15, and 18 on all petitioned grounds and granted ecobee’s motion to join the Copeland IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Copeland IPR. Copeland IPR, Paper 12, 2 (PTAB Oct. 2, 2023). Petitioner challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Copeland IPR. Mot. 1 (The Petition and” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Practice Guide (“CTPG”) for evaluating a joinder motion.8 CTPG 76 (citing Kyocera Corp. v. Softview, LLC, IPR2013-00004, Paper 15, 4 (PTAB April 24, 2013)) and contends the factors weigh in favor of exercising our discretion to join Petitioner as a party to the Copeland IPR. Mot. 4. In evaluating the Motion, we consider the reasons why joinder may be appropriate, whether the Petition presents any new grounds of patentability, the impact, if any, joinder would have on the trial schedule in the Copeland IPR, and how briefing and discovery may be simplified. CTPG 76.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“For this factor, our concerns are the “inefficiency” of addressing “substantially identical prior art arguments that were at issue in the district court” and the resulting “possibility of conflicting decisions.” Fintiv, IPR2020-00019, Paper 11, 12. The Director’s Fintiv Memo is in accord with these concerns. Fintiv Memo at 7 (“[T]he PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”). Because there is no possibility of our Final Written Decision in the joined proceeding conflicting with the judgment of the district court, and there will be little, if any, inefficiency or burden on the Board in proceeding with joinder, we find that this factor weighs heavily against exercising our discretion to deny institution/joinder.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Patent Owner admits that Petitioner has not previously filed a petition for inter partes review of the ’887 patent. Opp. 12. Under Valve Corp. v. Electronic Scripting Products, Inc., IPR2019-00062, Paper 11 (PTAB April 2, 2019) (precedential), General Plastic may apply when parties that have a “significant relationship” file successive petitions against the same patent. Valve Corp., Paper 11 at 10. In Valve, the successive petitioners were found to have a significant relationship because they were “co-defendants in the District Court litigation and were accused of infringing” the patent being challenged before the Board. Id. Patent Owner admits it “is not aware of a close relationship between Petitioner and Copeland Comfort Control LP.” Prelim. Sur-reply 4. In fact, Copeland and Petitioner are not co-defendants. Consequently, there is no “significant relationship” between Petitioner and Copeland. Patent Owner argues that General Plastic Factors 2, 4, and 6 weigh against joinder. Opp. 14. The Director, however, recently determined that where “the first and second petitioners are neither the same party, nor possess a significant relationship under Valve, General Plastic factor one necessarily outweighs the other General Plastic factors” and that “exercising discretion to deny the Petition is not justified.” Videndum Production Solutions, Inc. v. Rotolight Limited, IPR2023-01218, Paper 12, 6–7 (PTAB April 19, 2024) (Decision Granting Director Review). Regardless of whether the other factors weigh against joinder or not, factor one “necessarily outweighs” the other factors. Consequently, we do not exercise discretion to deny institution or joinder in this case based on General Plastic.” slip op. at 17
Discretionary denialPatents in suitUS 7,746,887 - PTAB · May 20, 2024 · IPR2024-00208 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood of success on the asserted obviousness grounds and declining discretionary denial under § 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Office conducted any analysis or evaluation of Wu. There is no mention of Wu by the Examiner and no articulated consideration of Wu by the Office. As noted above, Advanced Bionics provides that “[a]t bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Advanced Bionics, Paper 6 at 9 (emphasis added). Here, despite Wu (or more precisely, the substantially identical Wu. Publ.) having been previously presented to the Office, we are not directed to, and we cannot find, any analysis or evaluation by the Office of Wu in the file history. See generally Ex. 1002.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petitioner”) filed a Petition for inter partes review of claims 1–20 of U.S. Patent No. 11,010,709 B2 (Ex. 1001, “the ’709 patent”). Paper 2 (“Pet.”) at 1. SES-Imagotag Inc. (“Patent Owner”) filed a Preliminary Response. Paper 11 (“Prelim. Resp.”). With our authorization, Petitioner filed a Preliminary Reply (Paper 12, “Prelim. Reply”) and Patent Owner filed a Preliminary Sur-reply (Paper 13, “Prelim. Sur-reply”). We have jurisdiction under 35 U.S.C. § 314, which provides that 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.”” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“necessary to resolve the controversy involved in this IPR, and the terms of the ’709 Patent should be given their ordinary and customary meaning.” Pet. 4. Patent Owner does not propose any claim constructions. See generally Prelim. Resp. At this stage, no need exists to expressly construe any claim terms to resolve the parties’ disputes. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“planogram” (id. at 37). We determine that these contentions lack merit and Petitioner has sufficiently shown that Wu discloses these limitations.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,010,709 - PTAB · May 20, 2024 · IPR2024-00188 · APJ Terrence W Mcmillin · IPR · Institution
Instituted IPR of claims 1–15 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the Petition, the Preliminary Response, the Reply, and the Sur-reply “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–15 of the ’669 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field.” Pet. 8–9 (citing Ex. 1003 ¶ 33). Petitioner further notes that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of the requirements stated above.” Id. at 9. Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 18 n.5 (“For purposes of this [Preliminary Response] only, Patent Owner applies Petitioner’s articulation of the level of skill in the art.”). For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art.5 It is supported by the testimony of Dr. Tentzeris and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“the ‘communication stage’ recited in element [1.3] is simply a ‘communication module or unit’ that communicates data.” Reply 8 (citing Ex. 1001, 1:49–50, 2:19–20, 3:24–28, 3:63–65; Ex. 1003 ¶¶ 75–76). In response, Patent Owner argues that “Petitioner offers a brand-new claim construction for ‘communication stage,’” which “the Petition never offered,” and also that “Petitioner offers its new construction based exclusively on attorney argument without the benefit of evidence in support.” Sur-reply 6, 9. To the extent necessary to determine whether to institute trial, we address these arguments as part of our unpatentability analysis below. See infra § II.D.3. For purposes of this Decision, we determine that no claim terms require express construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“supposed well-recognized need in synchronizing video displays and that “[t]he only evidence Petitioner offers to explain why a POSITA would have modified Swafford with Masumoto relies on hindsight and two references besides Swafford and Masumoto—Yamada (Ex. 1010) and Kipp (Ex. 1006).” Prelim. Resp. 34–35. At least at this stage, as Petitioner’s contentions are supported by evidence including an expert declaration and Patent Owner’s contrary arguments are unsupported attorney argument, we give more weight to Petitioner’s contentions and find them sufficient to support the asserted combination of teachings. However, we do agree with Patent Owner that Petitioner’s contention that the cited combination of teachings is supported “because of the structural similarity between Swafford’s and Masumoto’s devices” (Pet. 54– 55) does not provide a motivation to combine. Prelim. Resp, 35–36. The only structural similarity relied on by Petitioner in support of this argument is that Swafford and Masumoto both disclose use of LCDs. See Pet. 54–55. Petitioner provides an inadequate explanation as to how or why the use of LCDs which are a common form of video displays would motivate the combination of the relied-upon teachings. But, this deficiency does not undermine the persuasiveness of Petitioner’s overall showing of motivation to combine. We determine that Petitioner shows sufficiently, for the purpose of institution, that a person of ordinary skill in the art would have been motivated to combine the relied-upon teachings of Swafford and Masumoto with a reasonable expectation of success.” slip op. at 41
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,405,669 - PTAB · May 20, 2024 · IPR2024-00189 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–9 on all asserted §103 grounds, finding a reasonable likelihood of success based on Fujiwara, Fujiwara and Arntzen, Bandy and Fowler, and Bandy, Fowler, and Arntzen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on all its challenges to patentability, namely: claims 1–9 as obvious over Fujiwara; claims 1–9 as obvious over the combined teachings of Fujiwara and Arntzen; claims 1– 5 and 8–9 as obvious over the combined teachings of Bandy and Fowler; and claims 1–5 and 8–9 as obvious over the combined teachings of Bandy, Fowler, and Arntzen. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes review of the ’340 Patent is hereby instituted, commencing on the entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial;” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinarily skilled artisan”) as one having “at least a Master of Science Degree in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field (or a similar technical Master’s Degree, or higher degree).” Pet. 9 (citing Ex. 1009, Tentzeris Decl. ¶ 34). Petitioner also states that “[a]lternatively, a POSITA would have had a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical engineering, computer engineering, wireless telecommunication systems, or an equivalent field with two or more years of work experience in electrical engineering, wireless telecommunication systems, computer engineering, or an equivalent field” and that “[a]dditional education in a relevant field or relevant industry experience may compensate for a deficit in one of the other aspects of these requirements.” Id. (citing Ex. 1009, Tentzeris Decl. ¶ 34). Patent Owner does not comment of the level of ordinary skill in the art. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As the subject matter of the ’340 patent and the references appears to be consistent with the level of ordinary skill in the art described by Petitioner, we apply Petitioner’s description for purposes of the Decision. slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner proposes that the terms of the ’340 patent claims should be given their plain and ordinary meaning as understood by a person of ordinary skill in the art. Pet. 3. Patent Owner contends that Fujiwara does not use the term “planogram” and that Petitioner has not demonstrated Fujiwara discloses the claimed planogram. Prelim. Resp. 19–22. The ’340 patent states “[a] planogram lists the locations of all the electronics labels [3] and of the items on sale in a sales area.” Ex. 1001, 6:35–37. Patent Owner also notes that Fowler states that “[a] planogram is a diagram of fixtures and products that illustrates how and where retail products should be displayed, usually on a store shelf, bin or counter in order to influence consumer selection.” Prelim. Resp. 30 (citing Ex. 1007 ¶ 221). In view of these descriptions of a planogram, we agree with the parties that no further construction of this term is required. slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,674,340 - Datavant, Inc. v. Vigilytics LLCInstitutedPTAB · May 13, 2024 · IPR2024-00226 · APJ Thomas L Giannetti · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all asserted obviousness grounds based on Evenhaim; Evenhaim with Settimi; Dick with Landi; and Dick, Landi, with Murphy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. See 35 U.S.C. § 314(a) (2018) (inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition”). We therefore institute inter partes review as to all of the challenged claims of the ’641 patent and all asserted grounds of unpatentability. See SAS Inst. Inc. v Iancu, 138 S. Ct. 1348, 1356 (2018); 37 C.F.R. § 42.108(a) (2023) (“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.”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “a Bachelor of Science degree in computer science, or a related field, and at least two years of experience in the field of computer science, focusing on data privacy, computer networking and/or data records management.” Pet. 9 (citing Clark Decl. ¶ 22). Petitioner adds that “[s]uperior education could compensate for less work experience, and vice-versa.” Id. We regard Petitioner’s description as consistent with the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“from Patent Owner’s claim-construction brief in the related district court litigation and “adopts these constructions for this proceeding.” Pet. 8 (citing Ex. 1010, 9–20). Patent Owner’s brief identifies these as “disputed claim terms.” Ex. 1010, i (Table of Contents). The brief indicates that Petitioner disputes Patent Owner’s construction for each of the terms. Id. at 1 (referring to the parties’ Joint Claim Construction Statement). As Petitioner expressly “adopts these constructions for this proceeding” (Pet. 8), we understand these constructions to be Petitioner’s identification of “[h]ow the challenged claim is to be construed” under 37 C.F.R. 42.104(b)(3) (2023). Without a Patent Owner Preliminary Response, we are not in a position to determine which constructions, if any, are necessary and disputed. Vivid Techs., Inc., 200 F.3d at 803; Nidec Motor Corp., 868 F.3d at 1017. Nevertheless, at this stage, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 16
Claim constructioncites KSRPatents in suitUS 9,118,641 - PTAB · Apr 17, 2024 · IPR2024-00005 · APJ Julia Heaney · IPR · Institution
The Board instituted IPR on claims 9 and 19 on all asserted grounds, finding a reasonable likelihood that Gowanlock 2 combined with Swivelpole renders at least one challenged claim unpatentable.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“District Court proceeding, and restate those positions here. See Pet. 20–21 (citing Ex. 1057, Ex. 1058); Prelim. Resp. 5. Both parties agree, however, that construction of “mounting pole” is not necessary in this proceeding. Pet. 21; Prelim. Resp. 5. Accordingly, we need not construe this term at this stage of the proceeding. 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues a person of ordinary skill in the art at the time of the invention “would have had at least a bachelor’s degree in petroleum engineering, mechanical engineering, civil engineering, construction, architecture, or a similar degree with a year or more experience working on or around rigs, such as a drilling rig, where one or more lighting systems were used to illuminate the wellsite.” Pet. 18 (citing Ex. 1008 ¶¶ 39–40). Petitioner further argues that “[a]dditional practical experience would substitute for lack of a formal degree.” Id. (citing Ex. 1008 ¶ 41). Patent Owner does not dispute 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 ’626 patent and the asserted prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“As to motivation to combine the references, we find that Petitioner sufficiently demonstrates a rational basis for a person of ordinary skill in the art to combine the teachings of Gowanlock 2 and Swivelpole. See Pet. 43– 51; Ex. 1008 ¶¶ 89–96. Patent Owner’s argument that the combination “goes against the fundamental teachings of both references, neither of which disclose a crown deck” (Prelim. Resp. 50) is not persuasive, because as discussed above, Petitioner has sufficiently shown that Gowanlock 2 discloses a crown deck. We do not agree that Swivelpole’s disclosure is limited to a lighting system for illuminating the area immediately beneath the light, and nothing beyond its adjacent walkway. See id. at 50–51. For example, Swivelpole’s description of its S3 system also states it is ideal for lighting roof tops. Ex. 1004, 9. Because Patent Owner’s argument does not reasonably credit the ability of a person of ordinary skill in the art to interpret Swivelpole’s disclosure as a whole, we do not find it persuasive.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“We find that Petitioner has demonstrated a material error by the Office in failing to consider the teachings of the prior art of record. Under the second prong of Advanced Bionics, we consider “the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection.” Becton, Dickinson, 17. Here, Petitioner has shown that during prosecution of the ’626 patent, the Examiner immediately allowed claims 21–33 and 35–39 of the application without rejection, in the first office action dated November 25, 2020. Ex. 1002, 34–35. The reasons for allowance set forth in the office action merely recite the limitations of claims 21 and 31, and state “the references of the Prior Art of record fail to teach or suggest the combination of the limitations as set forth in claim [21 and 31].” Id. Upon issuance, claims 21 and 31 became claims 9 and 19 of the ’626 patent, respectively. In view of the Examiner’s statement in the reasons for allowance of claims 9 and 19, we determine the Examiner erred by failing to consider the prior art of record. As discussed above with regard to the patentability challenges to claims 9 and 19 (see Section II.D.4), we find that Petitioner has sufficiently shown a reasonable likelihood that the combination of Gowanlock 2 and Swivelpole discloses the subject matter found allowable by the Examiner. Accordingly, we are persuaded that the Examiner erred in a manner material to patentability by overlooking the teachings of Gowanlock 2 and Swivelpole. Conclusion For the foregoing reasons, we decline to exercise discretion to deny institution under § 325(d). IV.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,900,626 - PTAB · Mar 14, 2024 · IPR2024-00366 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all petition grounds: claims 1–11 over Amanatides and Kohn, and claim 2 over Selzer and Fiske, based on a reasonable likelihood of success.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and in the Realtek IPR, we institute inter partes review.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, in the Realtek IPR Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same unified shader architecture. Realtek IPR Pet. 21–22. In the Realtek IPR, Petitioner also states that an ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. In the Realtek IPR, we agreed that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references. We apply the same reasoning to this Decision do not repeat that analysis here.” slip op. at 21
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable
“Analysis in the Realtek IPR In the Realtek IPR we were persuaded that Patent Owner antedated the Lindholm references and therefore they are not prior art. Therefore, in this proceeding we are not persuaded that Petitioner will succeed on its challenge based on the Lindholm references. Realtek IPR Dec. to Inst. 23– 41. We apply the same reasoning in this Decision and do not repeat our analysis here. In the Realtek IPR, we also noted that if the Lindholm references were considered applicable prior art, we are persuaded that Petitioner has cited sufficient evidence to demonstrate that a person of ordinary skill would have been motivated to combine the teachings of Lindholm ’685 and Lindholm ’913, and that in combination, the references would have taught, or at least suggested, all the limitations of claims 1–11 to a person of ordinary skill in the art. We apply the same reasoning to this Decisions and do not repeat that analysis here. Id.” slip op. at 22
§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454 - PTAB · Dec 1, 2023 · IPR2023-00922 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–11, finding a reasonable likelihood of success on Amanatides and Kohn for claims 1–11 and Selzer and Fiske for claim 2.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 6. This Decision on Institution is issued pursuant to 35 U.S.C. § 314, which provides that 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.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response., for the reasons described below, we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“The ’454 patent explicitly defines its unified shader stating “[t]he shader of the present invention is referred to as a ‘unified’ shader because it is configured to perform both vertex and pixel operations.” Ex. 1001, 3:10– 12. This definition does not limit the unified shader to one that switches back and forth between executing vertex and pixel threads. The ’454 patent also describes the embodiment in Figure 4A and Figure 5 as “exemplary.” In this “exemplary” embodiment, the unified shader “has ability to simultaneously perform vertex manipulation operations and pixel manipulation operations at various degrees of completion by being able to freely switch between such programs or instructions, maintained in the instruction store, very quickly.” Id. at 5:32–37. Claim 11 explicitly recites this feature. Id. at 8:26–30 (reciting “wherein the processor unit of the unified shader performs the vertex manipulation operations and pixel switching between instructions in the instruction store”). Based on the explicit definition of a unified shader in the ’454 patent and the explicit recitation in claim 11, we decline to adopt a construction that imports additional limitations into the term “unified shader.” The limiting term “unified shader” appears in the preamble of all the claims. We construe the claimed “unified shader” to mean a shader that is configured to perform both vertex and pixel operations. Ex. 1001, 3:10–12.” slip op. at 16
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“The test for conception is whether the inventor had an idea that was definite and permanent enough that one skilled in the art could understand the invention.” Tyco Healthcare Grp. LP v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 974–975 (Fed. Cir. 2014). As to conception of the subject matter claimed in the ’454 patent, Patent Owner cites (i) the R400 Top Level Specification dated March 14, 2001 authored by inventor Steve Morein (Ex. 2103), (ii) the R400 Shader Processor Specification dated January 23, 2001 authored by inventors Andrew Gruber and Andi Skende (Ex. 2012), and (iii) the R400 Sequencer Specification dated August 24, 2001 authored by inventor Laurent Lefebvre (Ex. 2010). Prelim. Resp. 25–30. According to Patent Owner the R400 Top Level Specification describes the R400 as including a shader processor and a sequencer, and explains that the R400 implements a unified processing pipe that includes a processor unit to perform 3D vertex and pixel operations. Id. at 28–29 (citing Ex. 2013, 9–10; Ex. 2001, Declaration of Dr. William Mangione-Smith (“Mangione-Smith Decl.”) ¶¶ 79, 98, 121, 133, 145, 182). Patent Owner cites the R400 Shader Processor Specification as describing general purpose registers configured to store both vertex and pixel data. Id. at 29 (citing Ex. 2001, Mangione-Smith Decl. ¶¶ 103, 125, 137). slip op. at 26
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“3. Reasons to Combine the Teachings of Lindholm ’685 and Lindholm ’913 Noting that Lindholm ’685 and Lindholm ’913 are both directed to a multithreaded shader and much of their Specifications and figures are the same, Petitioner contends that a person of ordinary skill would have recognized the Lindholm references disclose different details of the same ordinarily skilled artisan would have looked to the additional disclosure in Lindholm ’913 for additional details about scheduling threads for execution independent of other threads. Id. at 22. We agree that a person of ordinary skill would have had reason to combine the teachings of the Lindholm references.” slip op. at 22
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,760,454
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.