• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01071 · APJ Charles J Boudreau · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on the asserted obviousness grounds.

  RulingsInstitution decision

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

    “We have jurisdiction under 35 U.S.C. § 6 (2018). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, Preliminary Response, Preliminary Reply, Sur-reply, and all supporting evidence, we determine that Petitioner does not demonstrate a reasonable likelihood of prevailing for any of the challenged claims. Accordingly, we do not institute inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Petitioner contends that a person of ordinary skill in the art at the time of the invention of the ’468 patent “would have [had] a Bachelor’s degree in Computer Science and three to five years of industry experience in application development, database development, enterprise application management; or a Ph.D. specializing in the field,” but that “more education could compensate for less experience and vice versa.” Pet. 3 (citing Ex. 1003 ¶ 24). Patent Owner does not contest Petitioner’s contention with regard to the level of skill. See generally Prelim. Resp. As Petitioner’s unchallenged description of the level of ordinary skill appears appropriate to the subject matter of the ’468 patent and the cited prior art, we apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther

    “The term “module” is a classic nonce word that does not connote definite structure. See, e.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1350 (Fed. Cir. 2015) (“‘Module’ is a well-known nonce word that can operate as a substitute for ‘means’ in the context of [pre-AIA 35 U.S.C.] § 112, para. 6” and “is simply a generic description for software or hardware that performs a specified function” that “does not provide any indication of structure.”). Independent claims 14 and 27 do not use the term “module,”” slip op. at 10

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

    “Petitioner relies on Althoff’s relational database as teaching the recited data repository and, inter alia, the recited element module. See Pet. 14–17. However, Petitioner relies on Althoff’s “class Class 301,” a class used by Althoff’s object-oriented database, as the basis for its arguments with respect to the recited class module. Pet. 21. Although Althoff provides a database translator for translation between object oriented and relational database structures (see, e.g., Ex. 1006, 3:4–6 (stating that “it would be advantageous to provide a method of compilation and translation between object oriented and relational database structures”)), we agree with Patent Owner that there is no object named “Class” or “Class 301” in the user’s object database in Althoff and that no object name “Class” is translated into a “class module” in the relational database. Prelim. Resp. 32. We further agree with Patent Owner that Petitioner points to nothing from either the user’s object database or the meta-model that is translated into a “class module” found in the user’s relational database. Id. As Patent Owner argues, class Class 301 in Althoff is not an object in the user’s object database, but instead is a class (i.e., a data type) defined by the meta-model that can be used by the user’s object database as a data type when the user creates objects. Id. at 29–30, 32, 37– 38. Still further, we agree with Patent Owner that Althoff teaches that relational databases and object databases are distinct and incompatible, a problem that Althoff seeks to address with its disclosed systems and methods. See Prelim. Resp. 25–26, 29 (citing Ex. 1006, 2:9–14, 3:4–24). Patent Owner’s contentions are also persuasive that there is neither any “‘class Class 301’ table” disclosed in Althoff, notwithstanding Petitioner’s assertions, nor any reason to generate such a table. See Prelim. Resp. 36–39 (citing Pet. 21). As Patent Owner notes, by creating separate Althoff preserves class information. Id. at 33. But Althoff does not state that class information for each user-created object is stored in a “row” of a “class Class 301 table” as asserted in the Petition, and we agree with Patent Owner that Althoff would have no need to describe a translation process to convert objects into tables if the classes of the object database were already stored “rows” in a “table.” Id. at 38. With regard to the Petition’s reference to Althoff’s disclosure that “each object of class Class 301 comprises information in table 3-2” (Pet. 21 (quoting Ex. 1006, 11:12–16)), we agree with Patent Owner that Table 3-2 of Althoff does not concern a row of a “class table”; instead, as Patent Owner explains, “Table 3-2 is merely a descriptive device in the specification of Althoff that describes in a two-column format the information stored within an object of type ‘Class’ in the user’s object database . . . in a form more easily accessible to the reader than a narrative.” Prelim. Resp. 38–39 (citing Ex. 1006, 11:15–47).” slip op. at 28

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,979,468
• Servicenow, Incorporated v. Inquisient IncorporatedInstitution denied
  PTAB · Jan 16, 2024 · IPR2023-01073 · APJ Gregg I Anderson · IPR · Institution

  The Board denied institution because the Petition did not show a reasonable likelihood of success on any challenged claim, including the independent claims’ class-module limitation.

  RulingsInstitution decision

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

    “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.”” slip op. at 2

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

    “argument does not change Petitioner’s recognition that the ’855 patent describes a data repository as including modules, such that an ordinarily skilled artisan would have understood a “module” to be a portion of a data repository. The ’855 patent includes an extensive discussion of tables and relationships between tables, but does not define the term “module.” In the ’855 patent, the term “module” appears in the claims; “module” also appears” slip op. at 10

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

    “We agree with Patent Owner that, contrary to Petitioner’s assertion, Althoff does not teach the claimed class module, i.e., a module (or table) configured to define at least one class of the plurality of elements (Althoff’s objects 101) and store that class. The claimed “data repository” is the relational database. See Pet. 13. However, Class 301 is part of the object database and is not translated into the relational database. As Patent Owner argues, Althoff teaches that the system “selects a class 101 in the user’s object database 100,” not the relational database. See Prelim. Resp. 27 [in FIG. 1] comprises a set of classes 101.”)). Patent Owner’s contention that there would be no reason to generate a class Class 301 table as Petitioner asserts is also persuasive. See Prelim. Resp. 29–30. As Patent Owner notes, by creating separate tables for each class, e.g., a Component table and a Manufacturer table, Althoff preserves the class information. Id. Patent Owner also argues that Petitioner’s assertions concerning a class Class 301 table fail because “if objects were already stored in a table in the object database, there would be no need for Althoff to build a translator to translate objects into tables.” Id. at 31. For at least the foregoing reasons, we conclude that Petitioner has not shown adequately at this stage of the proceeding that Althoff teaches or suggests limitation 1[c]. Moreover, Petitioner does not allege that Surjanto addresses the above-identified deficiencies of Althoff with respect to that limitation. Thus, we determine that Petitioner has not demonstrated that there is a reasonable likelihood it will succeed in its challenge to claim 1. We need not address the remaining limitations of claim 1 or Patent Owner’s arguments as to why those limitations have not been sufficiently shown. See Prelim. Resp. 34–40.” slip op. at 25

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

    “Petitioner’s Contentions Concerning Reasons to Combine Althoff and Surjanto Petitioner contends that a person of ordinary skill would have had reason to combine the teachings of Althoff and Surjanto to achieve the well-known benefits of Surjanto’s extensions, which were specifically designed to extend OO databases like Althoff’s to provide the known benefits of XML document support, such as “allow[ing] users to reuse and process textual portions of document contents,” “enabl[ing] collaborative development of documents” and in general “offer[ing] comprehensive content management functionality.” Pet. 8–9 (citing Ex. 1008, 9; Ex. 1003 ¶ 61). be motivated to modify Althoff to include Surjanto’s XCoP extensions because of the well-known benefits of XML document support.” Pet. 9 (citing Ex. 1003 ¶¶ 158–164). Petitioner further identifies Surjanto as disclosing that XCoP allows “users to reuse and process textual portions of document contents.” Id. Patent Owner does not respond to Petitioner’s contention as to combining Althoff and Surjanto. We agree that Petitioner has demonstrated sufficient reasons for combining Althoff and Surjanto.” slip op. at 18

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,224,855
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · Dec 15, 2023 · IPR2023-00188 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable under the stated obviousness grounds; the motion to amend with substitute claims 23–26 is denied.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein. Having considered the arguments and evidence of record, we” slip op. at 23

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) 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 Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7

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

    “Further, although Patent Owner is correct in stating that Guthery discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17

  • 112 supportMotion to amend, deniedDenied

    “In light of the full record before us, including Patent Owner’s arguments at the Oral Hearing, we now consider whether the proposed amended claim properly encompasses a device other than the reader performing the claimed selection. We agree with Petitioner’s contention, that the “claim doesn’t tell us . . . which element performs the selection,” and that “[t]his difference . . . divorces the claim from the functionality described in the specification.” Opp. 3–4 (citing Ex. 1002, 290 (Spec. ¶ 21)). Dr. Phinney’s testimony supports this contention. Ex. 1026 ¶ 12. We do not give weight to the arguments by Patent Owner’s attorney at the Oral Hearing, because attorney argument cannot take the place of objective evidence. Gemtron Corp., 572 F.3d at 1380. This is especially true here, where the specification discloses that the reader makes the selection, but does not disclose that any other device makes or would be capable of performing the selection. Patent Owner has not shown, nor do we find, support in the disclosure of the ’706 patent for a device other than the reader performing or capable of performing a selection. Thus, based on Patent Owner’s position that the proposed claim amendment would encompass non-reader devices making the selection, the proposed amendment adds new matter and is impermissible. See Gentry Gallery Inc. v. Berkline Corp., 134 supporting disclosure, and therefore . . . a narrow disclosure will limit claim breadth.”). Accordingly, Patent Owner has not shown, nor do we find, support for “wherein after selection of one of the plurality of applications, subsequent communication between the reading device and the selected application takes place without requiring any further steps” as recited in independent proposed substitute claims 23, 25, and 26. Due to the lack of support in the original disclosure of the ’706 patent for this limitation, proposed substitute claims 23, 25, and 26, and claim 24 by virtue of its dependency from claim 23, seek to introduce new subject matter.” slip op. at 40

  Patent outcomesUS 8,581,706 unpatentable
  § 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,581,706
• Apple Inc. v. Aire Technology LimitedAll claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01137 · APJ Jeffrey S Smith · IPR · Final written decision

  Claims 1–3, 11, 12, 16, 18, and 20 are unpatentable as obvious; the motion to amend with proposed substitute claims 23–26 is denied.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “knowledgeable and familiar with the smart card and Radio Frequency Identifier (RFID) arts. Pet. 13. Petitioner states that such a “person would have a bachelor’s degree in electrical engineering, computer engineering, computer science, or equivalent training, and approximately two years of experience working in the electrical engineering field. Lack of work experience can be remedied by additional education, and vice versa.” Id. at 13. Patent Owner does not address the level of ordinary skill. See generally, PO Resp. 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the ’249 patent has an effective filing date prior to the effective date of the applicable AIA amendment, we refer to the pre-AIA version of § 103. 2 U.S. Patent No. 6,824,064 (Ex. 1005) 3 Japanese Paten Application No. 2000-163539A (Ex. 1006) 4 RFID Handbook: Radio-Frequency Identification Fundamentals and Applications, Klause Finkenzeller, 1999 (Ex. 1007) 5 Smart Card Handbook: Third Edition, Wolfgang Rankl, 2003 (Ex. 1008) 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 Petitioner’s description of a person of ordinary skill appears commensurate with the subject matter before us, we apply Petitioner’s definition.” slip op. at 7

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

    “We construe only those claim terms that require analysis to determine whether to institute inter partes review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). Any special definition for a claim term must be set forth in the specification with reasonable clarity, 1994). Petitioner submits that the terms of the challenged claims should be given their plain and ordinary meaning, and no terms require specific construction. Pet. 13–14. Although we may discuss the scope of the claim language during our analysis, we agree that no specific construction is necessary for us to reach our decision.” slip op. at 8

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We do not accord the testimony of Dr. Phinney little or no weight simply because it matches what Petitioner states in the Petition. The Xerox case cited by Patent Owner does not require or indicate otherwise. See Xerox at 1517 (noting that the deficiencies with expert testimony are that they are conclusory and lacking supporting evidence or technical reasoning.). Dr. Phinney’s testimony apprises us of why one of ordinary skill in the art would have understood the assertions made in the Petition, and his testimony is supported by evidence. We find that the declarations of Dr. Phinney are based on specific factual disclosures in the evidence of record. Therefore, we credit Dr. Phinney’s declaration testimony for the matters asserted based on the evidence and technical reasoning provided therein.” slip op. at 23

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

    “discloses an embodiment of a request-to-send packet that includes size information, we do not agree that Guthery requires this information to be included in the request-to-send packet. Rather, we agree with Petitioner, that Guthery’s description of a request-to-send packet as shown in Figure 8, which does not include information about the size of the message, indicates that the size information is not required by the request-to-send packet in at least some embodiments of Guthery. Ex. 1005, 8:65–9:12, Fig. 8; see id. at 8:25–29 (The “present invention is not limited to the packet types discussed and in fact assumes that new types can and will be defined in the future as needed.”); 7:43–50 (“In one particular embodiment,” packets have a fixed number of bytes, but “in other embodiments, packet types may have different sizes.”). We agree with Petitioner, that Guthery discloses multiple embodiments, and the combination made by Petitioner relies on the embodiments shown in Figures 14 and 15, where the requested application only needs two buffers and therefore would know, without receiving information from the request-to-send packet, to ask for two buffers. Ex. 1005, 12:19–59. We find that a person of ordinary skill, in combining the teachings in Guthery with Nozawa to identify and initialize an application most likely to be selected by the smart card reader, would rely on (a) information about the size of a message as shown in Figure 8, (b) Guthery’s teaching of an application programmed to determine its own memory requirements (Ex. 1005, 9:25–31), and (c) Guthery’s teaching of an application that only needs two buffers as shown in Figures 15A-15D, to preemptively transmit a permission-to-send packet from the application to the reader without waiting to receive the request-to-send packet from the reader, to yield the benefit of improving efficiency and reducing latency as taught by Nozawa. See Phinney Decl. ¶¶ 55 (testifying that Guthery’s system would preemptively prepare the buffers and transmit the permissionto-send packet without waiting to receive the request-to-send packet).” slip op. at 17

  Patent outcomesUS 8,581,706 unpatentable
  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 8,581,706
• Apple Inc. v. Aire Technology LimitedSome claims unpatentable
  PTAB · Dec 15, 2023 · IPR2022-01136 · APJ Brian J Mcnamara · IPR · Final written decision

  Claim 15 is unpatentable as obvious over Tobergte and Cole; claims 1–3 and 8–11 were not shown unpatentable because the references did not disclose claim 1’s search-signal limitation.

  RulingsFinal written decision

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

    “Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

  • Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner

    “Tobergte’s computer 38 and oscillator 34 are disconnected from energy source 40. Pet. Reply 14–15. Petitioner acknowledges that Tobergte improves upon prior art systems, in which the fixed station emits the high frequency magnetic field continuously, by emitting the high frequency magnetic field “only upon awakening from a low power rest state.” Petitioner points to the testimony of Dr. Phinney concluding that Cole’s presence detector is at a power level too low to fully power the data carrier, but sufficient to allow the data carrier to change the impedance of the field. Id. at 21 (citing Ex. 1003, Phinney Decl. ¶ 53, commenting on Ex. 1006, 6:1–8 cited by Patent Owner); id. at 2 (citing Ex. 1005, 1:21–35). Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

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

    “sufficient for the data carrier to switch to passive mode. Id. at 6:1−5. When the data carrier is switched into passive mode, the data carrier’s supply device generates the operating voltage for the electric circuit from the received high frequency energy. Id. at 6:5–9. Claim 1 of Tobergte does not suggest that the fixed station performs any search function. Instead, Tobergte’s fixed station receives both energy and data from the data carrier for the brief period that the data carrier is in the active mode. There is no indication that Tobergte’s fixed station is emitting signals to search for the data carrier. Instead, Tobergte claims a system in which the data carrier that “wakes up” the fixed station is then powered by the energy of the high frequency field transmitted by the fixed station. None of Tobergte’s other claims explicitly recites a search limitation. In other words, Tobergte describes and claims changing a conventional data carrier that transmits data only when interrogated (id. at 3:48−52) into a data carrier that begins transmitting energy and data first, when activated by a user (id. at 3:55−58, 3:65−67).” slip op. at 25

  • Expert testimonyPetitioner expert creditedOther

    “Even a small amount of power that may be consumed by incorporating Cole into Tobergte likely exceeds the power consumed by Tobergte’s configuration in which the computer and oscillator are disconnected from power. Nevertheless, neither party provides a specific power consumption analysis. On this issue, we weigh Dr. Phinney’s testimony over Patent Owner’s attorney arguments and determine that Patent Owner has not sufficiently supported its contention that Cole teaches away from Tobergte on this basis. We determine that a person of ordinary skill would have had reason to combine the teachings of Tobergte with those of Cole to provide a system that detects the presence of data carriers automatically without the need for the user to activate the data carrier with a switch.” slip op. at 16

  Patent outcomesUS 8,174,360 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,174,360
• Netflix, Inc. v. Gotv Streaming, LLCInstituted
  PTAB · Nov 7, 2023 · IPR2023-00757 · APJ Steven M Amundson · IPR · Institution

  The Board instituted IPR of claims 1–20 on all challenges, finding a reasonable likelihood of prevailing on at least one claim and declining discretionary denial.

  RulingsInstitution decision

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

    “to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’715 patent on all challenges included in the Petition.” slip op. at 2

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

    “C. Conclusion Concerning Discretionary Denial in View of Parallel Litigation Based on our assessment of compelling merits as discussed in more” slip op. at 27

  • Skill levelOther

    “B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 28

  • BurdenInstituted

    “C. Analysis Based on the current record, it is highly likely that Petitioner will” slip op. at 104

  Discretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 8,989,715
• Realtek Semiconductor Corp. v. Ati Technologies UlcInstitution denied
  PTAB · Oct 25, 2023 · IPR2023-00688 · APJ Kevin W Cherry · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 7–12 were unpatentable over the asserted § 103 grounds.

  RulingsInstitution decision

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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an 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.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented fails to show a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’628 patent. Accordingly, we deny institution of inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on this record, we adopt Dr. Manocha’s articulation of the level of ordinary skill in the art, which is consistent with the ’628 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 11

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “We agree with Patent Owner that Petitioner’s purported motivation that the modification would “preserve the image fidelity of the texture” lacks sufficient reasoning and support. Importantly, we fail to see, and Petitioner provides inadequate explanation or support, why adding an additional level of partitioning above the 4x4 and 8x8 blocks would “preserve the image fidelity of the texture” any more than what FXT1 already does. See Pet. 57. We also decline to give weight to Petitioner’s expert declaration, which merely repeats this conclusory reasoning without providing any additional explanation or evidentiary support. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). “Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning.” InTouch Techs., Inc. v. VGo Communs., Inc., 751 F.3d 1327, 1347, 1351 (Fed. Cir. 2014). Here, we find Petitioner’s reasoning and rational underpinning as to why FTX1 would be modified in the manner proposed to be lacking. Accordingly, because we find that Petitioner has failed to account for limitation 7(b), we find that Petitioner has failed to demonstrate a reasonable likelihood of prevailing in showing that claim 7 would have been obvious in view of FXT1.” slip op. at 27

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

    “The Specification, however, supports Patent Owner’s construction. In the Background section, the Specification consistently uses the term “block” as a division of an image. See, e.g., Ex. 1001, 1:67–2:3 (“The codebook entries are blocks of pixels of some size (typically 2×2 or larger). For each block of pixels in the original texture, an index is stored to the codebook entry that most closely approximates the block.”). Moreover, the Background section describes the prior-art DXTC technique as “a block-based texture compression scheme” that “explicitly stores two 16-bit colors per 4×4 pixel block.” Id. at 2:24–29. The Background section also describes FXT1, which Petitioner asserts in one of its challenges here, as “a competing compression scheme with DXTC,” which “essentially extends DXTC with some additional block types that can be mixed within any given image.” Id. at 2:46–48. The Specification also uses “block” in the same way in its “Detailed Description of the Preferred Embodiments.” Indeed, the Specification states that [T]he present invention further refines block-based image compression techniques such as DXTC with a flexible method for pre-compression partitioning of texture blocks. The pre-compression partitioning enhances image quality by flexibly selecting partitions suitable to the characteristics of the texture block being compressed, rather than adopting the one-size-fits-all approach suggested in other methods. Ex. 1001, 4:52–57; see also id. at 5:66–6:4 (noting “the present invention represents a further refinement of block-based texture compression schemes such as DXTC” and “the basic compression algorithm . . . divides or splits the image up into discrete blocks of pixels”). The Specification goes to reinforce the understanding of the term “block” as a division of the entire image. For example, when discussing the preferred embodiment, the Specification explains As with other block-based texture compression schemes, the original texture is then split or divided into original blocks of pixels according to step 305. Typically, the original block of pixels is a square or rectangular block—e.g., 4×4 or 8×8 pixel. The size of the original block of pixels is variable, and may be selected according to user needs, application demands and/or system capabilities. Id. at 6:20–26; see also id. at 9:12–13 (“[T]he texture is divided into blocks of 8x8 pixels for compression.”). Thus, we determine that the Specification consistently uses the term “block” to indicate a division of an image, not the image itself, which supports Patent Owner’s construction.” slip op. at 13

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 11,184,628
• Netgear, Inc. v. WSOU Investments, LLC, D/B/A Brazos Licensing And DevelopmentAll claims unpatentable
  PTAB · Oct 12, 2023 · IPR2022-00606 · APJ Brian J Mcnamara · IPR · Final written decision

  Claims 1–4, 6, 10, and 12 are unpatentable as obvious over Gouriellec; the majority did not reach the Everdingen grounds.

  RulingsFinal written decision

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

    “A. “marking incoming control packets . . . according to a receiving rate of control packets” (part of Claim Limitation 1.b) Claim limitation 1.b recites, inter alia, “marking incoming control packets . . . according to a receiving rate of control packets.” Patent Owner contends that this portion of claim limitation 1.b means that incoming 2 We apply the per-AIA provisions of the statute, as the application for the ’630 patent was filed before March 16, 2013. 3 U.S. Patent Publication No. 2002/0031091 to Michiel van Everdingen, “Method and a Device for Controlling Source Specific Data Flow,” filed August 31, 2001 (“Everdingen”) (Ex. 1004). 4 U.S. Patent No. 7,133,360 to Louis Le Gouriellec et al., “Conditional Bandwidth Subscriptions for Multiprotocol Label Switching (MPLS) Label Switched Paths (LSPS),” filed May 7, 2002 (“Gouriellec”) (Ex. 1005). ‘control packets’ (i.e., a particular type of packet), (2) they must all be ‘received at said first plurality of inputs’ and (3) they include only those that are ‘to be processed according to a first routing protocol.’” Sur-reply 1 (citing PO Resp. 5–6; Ex. 1001, 6:31–37, 6:50–55) (brackets omitted); see also PO Resp. 10–11. Petitioner’s expert Dr. Akl generally agrees that in the ’630 patent “[t]he marking is defined in function of the receiving rate of control packets being received at an identical subset of inputs and being to be processed by the common processor according to an identical protocol.” Ex. 1003, Akl Decl. ¶ 73 (citing Ex. 1001, 2:48–51, 2:66–3:3). Given this general agreement between the parties, we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets.” Notwithstanding the parties’ apparent agreement on the issues discussed above, according to Patent Owner, Petitioner advanced a new claim construction position in the Petitioner Reply, namely that this limitation is “satisfied by indiscriminately marking according to a receiving rate of all packets, regardless of whether each one of the ‘incoming packets’ is a ‘control packet’ satisfying all the criteria expressly set forth in the claim language.” Sur-reply 2 (citing Pet. 21; Ex. 1003, Akl Decl. ¶ 75). Although Patent Owner cites arguments presented on page 21 of the Petition, Patent Owner argues Petitioner’s Reply advances a new argument because it argues “that ‘control packet’ should be construed to mean ‘the header portion of a packet that can also include user data (a ‘data packet’).” Id. (citing Pet. Reply 7). According to Patent Owner “under Petitioner’s new and shifted interpretation ‘control packet’ refers to the header portion/part of any kind of packet, including data packets.” Id. arguments were new—which they are not (see, e.g., Pet. 20–21; Dec. to Inst. 16–19)—we adopt Patent Owner’s three criteria for “marking incoming control packets . . . according to a receiving rate of control packets,” as mentioned above. We further note that Patent Owner’s arguments implicate the proper construction of “control packet,” which we discuss in greater detail directly below. See Section VI.B herein.” slip op. at 8

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

    “As the ’630 patent provides no reference to an industry-standard use of the terms “control packet” and “data packet,” we cannot determine from the ’630 patent whether there is a plain and ordinary meaning of the terms “control packet” and “data packet.” The record also does not provide sufficient information to determine the plain and ordinary meaning of “control packet” to an ordinarily skilled artisan. For example, Petitioner’s reference to Nandy as describing a control packet is not determinative. Pet. 20–21 (citing Ex. 1007, code (57), 2:52–54), Hr’g Tr. 14:26–15:2. Nandy describes a control packet as one that functions as a sensor, i.e., as a header packet injected into a network at an edge router to sense congestion along the path of aggregated data, such that the loss of a control packet slows the transmission of data. Ex. 1007, 5:22–30, 5:57–6:2, 7:7–18. Patent Owner acknowledges that packets can contain headers with control information, but defining a control packet that broadly “there would be no basis by which you could distinguish the control packet from a data packet.” Hr’g Tr. 22:24– 23:5, 40:4–16 (arguing that if information in a packet that routes the packet correctly is sufficient to qualify a packet as a control packet, “it would vitiate this specific limiting lexicography and render every packet that a router receives as control packet which is not consistent with the intrinsic evidence.”). According to Patent Owner, in the ’630 patent a control packet is “not a packet containing information to route a packet, it is a packet used to create the forwarding path, bring into existence the forwarding path.”). As discussed above, the ’630 patent does not describe the “required control data required to create the forwarding path” that characterizes a control packet, does not describe the “forwarding path” that data packets “do not leave,” does not preclude the forwarding path from including the common processor to which control packets are routed, does not describe how the forwarding path is determined, does not describe the processing of control packets that takes place at the common processor (except for marking the packets), does not describe a mechanism for distinguishing control packets from data packets, and does not preclude marking data packets. Based on the record, to a person of ordinary skill, the meaning of and practical significance of the ’630 patent’s distinction between a “control packet” and a “data packet” beyond the confines of the ’630 patent is not clear. All that can be said, based on ’630 patent’s description, is that the claimed “control packets” have the following characteristics: (1) they are packets that “are to be routed from the different inputs to the common (3) “comprise the required control data to create the required forwarding path 7 and might possibly be adapted.”8 Ex. 1001, 1:13–22. Therefore, we construe a “control packet” to be a packet with these three characteristics.” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “4. Conclusion as to Claim 1 Having reviewed the arguments and evidence of record, we are not persuaded that Petitioner has demonstrated that Gouriellec discloses all the limitations of claim 1 for purposes of anticipation because Gouriellec does not explicitly distinguish control packets recited in limitation 1.b from data packets. Instead, Gouriellec describes a classifier that classifies inbound packets based on information in a header having source and destination addresses and port numbers to select traffic flows that are to receive a particular service. Ex. 1005, 4:44–49. Petitioner relies on the unrebutted testimony of Dr. Akl, which we find to be persuasive, for the proposition that a POSITA would have understood that “Gourillec is talking about control packets when its marker changes or ‘marks’ the information in a header.” Pet. 35, Pet. Reply 7 (citing Ex. 1003, Akl. Decl. ¶ 114). As Gouriellec concerns controlling flow of traffic into a node over a” slip op. at 28

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

    “construction above. See Section VI herein. Gourillec does not distinguish data packets from control packets, as those terms are used in the ’630 patent. Gouriellec discloses packets routed according to the MPLS protocol, i.e., a protocol that provides connection-oriented services that enable tunneling across a wide area network, on a pre-configured label switched path. Ex. 1005, 1:22–38. “A label switched path is a path through an MPLS network so that when a label is applied, traffic transits multiple routers in the LSP.” Id. at 1:30–32. In MPLS, a packet is assigned to an FEC just once as a short fixed length “label.” See Ex. 1008, 4–6. Although there is no further analysis of a packet’s network layer header, the label is used as an index into a table which specifies a next hop and a new label that replaces the old label. Ex. 1005, 1:39–45; Ex. 1008, 4–6. Thus, the packet contains the information required to create a forwarding path. As the packet is routed at least to a switch capable of doing label lookup and replacement, i.e., capable of processing, all the criteria of a control packet under our construction are met, i.e., the packets in Gouriellec are (1) packets that “are to be routed from the different inputs to the common processor;” (2) “in order to be processed by this common processor,” and (3) “comprise the required control data to create the required forwarding path and might possibly be adapted.” Given this understanding of “control packets” in Gouriellec, we now return to the last feature of the “marking” limitation, i.e., that all the marked packets must be “control packets.” See Section VI.A. herein. Petitioner has set forth evidence that Gouriellec’s marker sets or resets DiffServ codepoints (DCSP fields) that are in packet headers. See, e.g., Ex. 1005, 4:61–62; the MPLS protocol (see, e.g., Ex. 1005, 1:22–38), which means that the headers of all packets in Gouriellec include forwarding path information. See, e.g., Ex. 1008, 4–6. This supports Dr. Akl’s unrebutted testimony that a POSITA would have understood that “Gouriellec is talking about control packets when its marker changes or ‘marks’ the information in the header.” Ex. 1003, Akl Decl. ¶ 114. Thus, based on the complete trial record, we are persuaded that Gouriellec teaches or at least suggests that all marked packets are “control packets,” as that term is understood in the ’630 patent. We note that Patent Owner’s arguments to the contrary are not supported by any evidence or testimony that undermines Petitioner’s persuasive showing.” slip op. at 25

  Patent outcomesUS 7,551,630 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,551,630
• Current Lighting Solutions, LLC D/B/A GE Current v. Jiaxing Super Lighting Electric Appliance Co., Ltd.Institution denied
  PTAB · Aug 16, 2023 · IPR2023-00269 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on all challenged claims because the Li and Ono combinations did not establish a reasonable likelihood of showing the claimed component placement obvious.

  RulingsInstitution decision

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

    “In sum, weighing the parties’ arguments and evidence, we find Petitioner has not persuasively addressed limitation 1[h]’s requirement for a “resistor which is positioned closest to the end wall” or limitation 30[h]’s requirement for a “capacitor which is positioned closest to the end wall.” b) Conclusion for Ground 1 Because Petitioner does not provide sufficiently persuasive arguments and evidence addressing limitations 1[h] and 30[h], we find Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of independent claims 1 and 30. Additionally, Petitioner’s arguments and evidence addressing dependent claims 2, 4–6, 31, 37, 88, and 90 do not cure the deficiencies in Petitioner’s challenge to independent claims 1 and 30. Pet. 36–43, 47–48. Accordingly, Petitioner also fails to demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 4–6, 31, 37, 88, and 90.” slip op. at 27

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “to “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as 1-2 years of academic or industry experience in LED lighting design.” Pet. 6 (citing Ex. 1003 ¶ 21). Petitioner also asserts that an ordinary artisan would have had “knowledge of LEDs and related technology for driving LEDs” and “would have been familiar with the field of technology” related to fluorescent lamps, their pre-heat process, increasing popularity of LED lamps, a need for heat dissipation and management in LED lamps, and end-cap openings used to lessen internal heat or pressure. Id. (citing id. at 6–11; Ex. 1002 ¶ 21). At this stage, Patent Owner does not address the level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’989 patent. See also Ex. 1003 ¶ 21.” slip op. at 10

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “asserting that it would have been obvious in view of Li and Ono to locate varistor R1 or capacitor C1 closest to an end wall. Petitioner argues that a person of ordinary skill in the art would have understood heat-dissipation benefits of locating a resistor or capacitor closest to an end wall. Pet. 36, 47. In support of this, Petitioner relies on Dr. Ackley, who testifies as follows: a [person of ordinary skill in the art] would have understood that resistors are heat generating circuit elements. Therefore, it would have been obvious for a [person of ordinary skill in the art] to place the resistor closest to the end cap such that heat would be efficiently dissipated through heat dissipating functions in the end caps, such as ventilating holes. This placement would cool the resistor as well as minimize the effects of the resistor heating up other components on the PCB and improve the lifespan of the LED lamp. As an alternative to, or in addition to ventilation holes, the PCB could be placed in direct contact with the end cap. A [person of ordinary skill in the art] would have understood that heat is transferred to the end cap through this direct connection and would have been conducted out of the LED lamp to the outside environment directly through the end wall or through the conducting pins. Thus, it would have been obvious to a [person of ordinary skill in the art] to locate the (heat generating) resistor closest to the end cap. Ex. 1003 ¶ 100; see also id. ¶ 122 (similar testimony addressing placing capacitor closest to end wall). Patent Owner suggests that this testimony stems from improper hindsight based on the ’989 patent’s disclosure of heat-dissipation benefits of the claimed component locations. Prelim. Resp. 33–34. We determine that Petitioner’s rationale is insufficiently supported. Dr. Ackley provides no supporting evidence to corroborate his opinion. See Ex. 1003 ¶¶ 100, 122. And, as noted above, the ’989 patent describes LED tube lamp embodiments with a capacitor or resistor closest to an opening in the end wall, explaining that “the closest element will have better heat dissipation effect and this makes the LED tube lamp operate normally.” Id. at 3:55–57, 4:19–40. As a result, we are concerned that Petitioner’s rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)). Accordingly, we do not find Dr. Ackley’s testimony to be sufficient to support Petitioner’s contention that a person of ordinary skill in the art would have recognized the heat-dissipation advantages of Patent Owner’s claimed arrangement.” slip op. at 24

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

    “sufficiently its arguments about the locations of Li’s varistor R1 and capacitor C1 relative to an end wall. Petitioner and Dr. Ackley assume certain spatial relationships based on Li’s Figure 6 and related disclosures. Pet. 34–35, 45–46; Ex. 1003 ¶¶ 98, 120. But, consistent with Patent Owner’s argument, Li’s Figure 6 is a “schematic circuit diagram,” not a representation of lamp components’ spatial arrangement. Ex. 1005 ¶ 41; Prelim. Resp. 30–31. In addition to Figure 6, Petitioner and Dr. Ackley cite Li’s disclosure that “the filter capacitor C1 and the varistor R1 are connected in parallel between the AC input terminals B3 and B4 of the full-bridge rectifier BR1, wherein the varistor R1 holds the input voltage of the full-bridge rectifier BR1 at a predetermined level by suppressing abnormal overvoltage in the circuit.” Ex. 1005 ¶ 115; Pet. 34–35, 45; Ex. 1003 ¶¶ 98, 120. Like Figure 6, this discloses the components’ electrical relationships. Li’s disclosure of certain electrical relationships does not specify any particular spatial relationships of varistor R1 and capacitor C1 to an end wall. And neither Petitioner nor Dr. Ackley explains why a person of ordinary skill in art would have read the disclosed electrical relationships as teaching component locations to arrive at the particular spatial arrangement required by the claim.” slip op. at 22

  § 103 obviousnesscites Phillips
  Patents in suitUS 10,560,989
• Current Lighting Solutions, LLC D/B/A GE Current v. Jiaxing Super Lighting Electric Appliance Co., LtdInstituted
  PTAB · Aug 16, 2023 · IPR2023-00272 · APJ Brian J Mcnamara · IPR · Institution

  The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–6, 8–12, and 14–18 are obvious over the Jing and Huang based combinations.

  RulingsInstitution decision

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

    “[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo 3. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Petitioner has offered to submit a Sotera stipulation in the parallel proceeding. See Ex. 1009. In addition, on July 17, 2023 the parties filed a Joint Motion to Stay All Deadlines and Notice of Settlement in the Current Action. See Current Action, Paper 96. The district court granted the motion” slip op. at 4

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

    “XI. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on its challenges to claim the following challenges to patentability: Claims 1–3, 8, 9, 14, and 15 as obvious over Jing and Huang; Claim 4 as obvious over Jing, Hunag, and Foo Claims 10 and 16 as obvious over Jing, Huang, and Zhao Claims 5 and 6 as obvious over Jing, Huang, Foo, and Deng; and Claims 11, 12, 17, and 18 as obvious over Jing, Huang, Zhao and Deng. The factual findings and conclusions of law in this Decision are preliminary and based on the current record. They are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Our final decision as to the patentability of challenged claims will be based on the full record developed during trial, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in such a response may be deemed waived. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 35

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the ’397 patent’s earliest claimed priority date as having “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as at least 1-2 years of academic or industry experience in lighting design, including knowledge of light emitting diodes (LEDs) and related technology for driving LEDs.” Pet. 5 (citing Ex. 1004 ¶ 24). Petitioner also notes that “[a] person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry 3 Chinese Patent No. CN203036295U to Jing (Certified Translation) (Ex. 1002). 4 US Patent No. 9,151,475 B2 (Ex. 1003). 5 US Patent No. 9,206,970 B2 (Ex. 1008). 6 PCT Publication No. WO2013/152485 A1 (Ex. 1005). 7 US Patent No. 9,970,640 B2 (Ex. 1007). 8 Chinese Patent No. CN203797412U to Deng (Certified Translation) Ex. 1006. experience, or vice versa.” Id. Patent Owner does not comment on the level of ordinary skill. See generally, Prelim. Resp. 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 Petitioner’s description of an ordinarily skilled artisan appears to be commensurate with the subject matter of the ’397 patent and the references, we apply it for purposes of this Decision.” slip op. at 7

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “A. Disposed on Petitioner asserts that the term “disposed on” does not require explicit construction, but contends that the term “should be understood to include the possibility of an intervening structure, such as an adhesive.” Id. at 13. Petitioner notes that the Specification describes an embodiment in which the LED strip is described as disposed on an inner surface of the light tube and an embodiment in which a diffusion film is coated on an inner surface of the lamp tube, the LED light strip is disposed on an inner surface of the lamp tube, and a reflective film is described as disposed on an inner surface of the lamp tube. Id.; Ex. 1001, 4:30–31, 4:37–44, 12:21–25 (diffusion covering but not in contact with LED sources), Figs. 30–31. Petitioner’s unopposed construction is consistent with the use of the term “disposed on” in the Specification. For purposes of this Decision, we apply the construction proposed by Petitioner.” slip op. at 9

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,830,397

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.