- PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. 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. We hereby institute an inter partes review as to claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. 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 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · May 10, 2024 · IPR2024-00031 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 15–20, 24, 26, and 27 on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · Apr 22, 2024 · IPR2024-00015 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–14 over all petitioned grounds, finding a reasonable likelihood of prevailing and declining to deny institution under §325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute 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 the information presented in the Petition and the Preliminary Response shows “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 explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“subject matter. Pet. 40–42. As noted above, Petitioner argues that Cheng discloses that frame 20 supports touch panel 10 using support 50. Pet. 40 (citing Ex. 1004, Fig. 1; Ex. 1002 ¶ 142). Petitioner relies on Han for teaching the parabolic curvature that is recited in limitation f, and Petitioner relies on Zhao for teaching a process that induces curvature during installation of the panel. See Pet. 27 (“[I]t would have been obvious for a [person of ordinary skill in the art] to combine the touch screen display device and frame elements of Cheng, with the parabolically curved touch screen elements of Han and the curvature-inducing frame elements of Zhao.” (citing Ex. 1002 ¶ 118)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“2. Advanced Bionics Part Two In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 10. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. Advanced Bionics, Paper 6 at 10–11. For the reasons explained below, we find that Petitioner has shown the Office erred.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“had “at least a bachelor-of-science or comparable degree in mechanical engineering or an equivalent discipline and at least five years of experience designing touch sensors, provided that the educational level can offset the experience level, and vice versa.” Pet. 18 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’935 patent and the asserted prior art, except that we delete the qualifier “at least.”” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,775,935 - PTAB · Apr 22, 2024 · IPR2024-00014 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood that claims 1–5 are obvious over Cheng, Han, and Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 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, and we institute inter partes review as to all of the challenged claims of the ’335 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“limitation, where it would have been obvious for a person of ordinary skill in the art “to modify Cheng’s plate to incorporate Han’s parabolic touch screen curvature along Ax and Ay directions to improve touch detection accuracy.” Pet. 46 (citing Ex. 1033 ¶ 165). Petitioner contends that it would have been obvious to modify Cheng’s frame with Zhao’s curved mounting surfaces and frame, which would induce curvature into the plate. Id. at 47–48 (citing Ex. 1004, Fig. 1; Ex. 1005, Fig. 2; Ex. 1012, Fig. 1; Ex. 1033 ¶¶ 166–167). Petitioner argues that “Cheng’s modified curved plate touch surface would be curved relative to a flat plane defined in part by the short and long edges of frame 20.” Id. at 50. Petitioner asserts that “[a] flat plane would be defined (at least in part) by Cheng’s modified curved edges,” as shown in annotated Figure 1 of Zhao, reproduced below. Id.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the “focus” of factor (c) and “informs” the petitioner’s showing under factors (e) and (f). As to factor (c), Petitioner asserts, and the record shows, Han, Cao, Shin, and Zhao were only listed or cited to in IDSs and were not addressed in any Office Actions. See Ex. 1032. Further, as Petitioner notes, there were 810 total references, and these references were cited in a single IDS containing 129 additional references. Id. at 76–82; Ex. 1031, code (56). Petitioner further points out that the record reflects that the Examiner only initialed the IDSs, which contained these many references, and did not issue Office Actions, which is sufficient to demonstrate that there is no evidence that the asserted art was substantively evaluated during examination. See Pet. Prelim Reply 3–5. As Advanced Bionics recognizes, a showing of material error varies depending on the degree to which the previously-presented art was substantively addressed by the Office. Advanced Bionics at 10–11. Turning to factor (e), as Petitioner notes, the record is silent as to how the Examiner viewed the prior art listed in IDSs which is asserted here. We recognize that it is difficult to characterize error in a silent record. In this light, we find that Petitioner’s assertion that the Examiner failed to adequately consider the references, which should have resulted in an Office Action because the references clearly disclose the ’335 patent claimed subject matter, serves as sufficient identification of error under factor (e). Pet. Prelim. Reply 5. Moreover, as discussed above and relevant to factor (f), the evidence presented in the Petition is meritorious, which further demonstrates that the combination of the cited prior art was overlooked during prosecution. Accordingly, under the second part of the Advanced Bionics framework, we decline to exercise our discretion to deny institution of trial under § 325(d).” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” because that articulation is consistent with the ’335 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,335 - PTAB · Apr 22, 2024 · IPR2024-00013 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that claims 1 and 2, 5–7, and 9–15 are obvious over Chen ’975 and Klein.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“At this juncture, we do not find support for Petitioner’s proposed interpretation of the plain meaning of the term “sealing element” to include a carve-out of “protection from some, but not necessarily all, dirt, water and other contaminants.” First, we discount Petitioner’s reliance on Patent Owner’s contentions in a related litigation for this interpretation—the claim term in the litigation is for a different patent and relates to a different term. See Ex. 1011, 71. Second, Petitioner’s references to the ’338 patent Specification for the support of this interpretation are directed to sealing window 126, and in the cited descriptions of it, we do not discern any support for the limited view that the protection provided is only from “from some” contaminants. Ex. 1001, 8:12–19, 16:27–34, 16:61–66 (cited in Pet. 42). Instead, the Specification states that “sealing window 126 provides sealing” and “[t]his means sealing window 126 prevents ingress of dirt, water and other contaminants into the interior of the touch sensing apparatus 100.” Ex. 1001, 16:30–33 (emphasis added). This description appears to be consistent with the ordinary meaning of “seal.” For instance, “seal” is defined in the Oxford English Dictionary10 as “means of preventing the passage of gas or liquid into or out of something, esp. at a place where two surfaces meet.” Ex. 3001, 6.d. Accordingly, on this preliminary record, we decline to adopt Petitioner’s proposed carve-out for the ordinary meaning of the term; instead, for the purposes of this decision we use of the ordinary meaning of the term “sealing element” as an element to provide sealing (preventing the passage of contaminants). The parties are invited to provide additional briefing on this issue during trial.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have been motivated to use Klein’s optical overlay 10 in the touch display of Chen ’975 for several reasons. Pet. 33 (citing Ex. 1003 ¶ 77). Petitioner asserts that Chen ’975 does not disclose the effectiveness of filter strip 44 as a barrier to contaminants and that the reference provides only minimal details on how to implement filter strip 44. Id. (citing Ex. 1005 ¶ 39). Petitioner contends that a person of ordinary skill in the art would look to Klein, which discloses more details on optical overlay 10, including suitable materials. Id. (citing Ex. 1003 ¶ 77). Specifically, Petitioner points to how Klein discloses features of mounting and assembly and discloses how the optical overlay 10 functions in a way that “[s]ignals from the transmitters 34 may be collimated by the lens 42 of the outer wall 16 on one side of the overlay 10 and focused onto a receiver 36 by the lens 42 on the opposite side of the overlay 10.” Id. at 34 (citing Ex. 1006, 3:37–39, 7:34–38). Petitioner contends that these implementation details are missing from Chen ’975 and that a person of ordinary skill in the would have therefore been motivated to implement Chen ’975’s filter strip 44 using the optical overlay 10 disclosed in Klein. Id. When discussing groove and gasket use in Klein, Petitioner asserts that person of ordinary skill in the art “would have been motivated to implement Chen ’975’s filter strip 44 with the features of Klein’s optical overlay 10 to achieve this ‘sealing or weatherproofing.’” Pet. 35 (citing Ex. 1003 ¶ 81). Petitioner argues that a person of ordinary skill in the art would have recognized that this sealing/weatherproofing would have advantageously enabled Chen ’975’s filter strip 44 to provide “a more robust system that would last longer and/or require less maintenance (e.g., putting in new emitters/detectors when the old ones break)”; “usability in less hospitable environments that may have more contaminants (e.g., outdoors)”; “better performance (e.g., detectors/emitters operating at peak performance without contaminants”; and “the ability to collimate the light from the emitters and focus to at the detectors.” Id. at 35–36.” slip op. at 22
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”). The non-exclusive factors set forth in Becton, Dickinson “provide useful insight into how to apply the framework” of Advanced Bionics under § 325(d). Advanced Bionics at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics at 10.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,338 - PTAB · Apr 2, 2024 · IPR2023-01469 · APJ Jason M Repko · IPR · Institution
The Board instituted inter partes review of claims 1–22 on all petitioned grounds, finding a reasonable likelihood that Petitioner would prevail, including over Ho.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience.” Pet. 6 (citing Ex. 10021 ¶¶ 53–56). According to the Petition, “[a]dditional education might compensate for less experience, and vice-versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would be a person with a bachelor’s degree in a technical field such as electrical engineering, computer engineering, computer science, or physics, and/or 2–3 years of relevant practical experience in wireless communication, data” slip op. at 4
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Construction 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) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner offers two alternative constructions for “default frequency band”: (1) “a preferred frequency band” and (2) “a preset frequency band used automatically in the absence of a choice made by the user.” Pet. 6 (citing Ex. 1017, Attachment A, 4). Patent Owner asserts that the Administrative Law Judge in the parallel ITC action construed “default frequency band” to mean “a first selected frequency band.” Prelim. Resp. 9 (citing Ex. 1003, 32). In this decision, we do not see a need to construe this term to resolve any issues because Petitioner has shown a reasonable likelihood of prevailing on its challenge under any of the offered constructions. See infra § II.D.2.b.i.” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“b. The Second Part The second part of the framework asks whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. “An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.” Id. at 8–9 n.9. Patent Owner argues that Ho was expressly used by the Examiner to reject the claims, which shows that the Examiner considered and evaluated Ho. Prelim. Resp. 22. Patent Owner argues that Petitioner did not identify any errors in the Examiner’s evaluation of Ho, Gatewood, or Farid, and Petitioner’s arguments about reconsideration of the prior art are unsupported and conclusory. Id. at 22–23. We disagree. Petitioner shows that the Examiner overlooked specific teachings of the relevant prior art: Ho’s RSSI threshold. See Pet. 55 (quoting Ex. 1009, 14:38–41). Although Ho was the basis for a rejection, the Examiner cited Ho” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“iii. Analysis We disagree, at this stage, that Petitioner needs to show that every possible combination of personalities of Ho’s hybrid device meets the claim limitation. Rather, “a prior art reference may anticipate or render obvious an apparatus claim—depending on the claim language—if the reference discloses an apparatus that is reasonably capable of operating so as to meet the claim limitations, even if it does not meet the claim limitations in all modes of operation.” ParkerVision, Inc. v. Qualcomm Inc., 903 F.3d 1354, 1361 (Fed. Cir. 2018). Here, the Petition sufficiently sets forth a particular mode of operation that is the basis for its challenge: hybrid device 120 is a 1002 ¶ 143). For the reasons discussed below, Petitioner has shown at this stage that this configuration meets the claim limitations. See infra § II.D.2.b. Thus, we disagree with Patent Owner’s arguments on this record. See Prelim. Resp. 39–40.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,681,698 - PTAB · Mar 8, 2024 · IPR2023-01400 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–37 because Petitioner showed a reasonable likelihood of prevailing on claim 1 under §103 over Gupta, alone or with Murty.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’242 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience,” and that “[a]dditional education might compensate for less experience, and vice-versa.” Pet. 4 (citing Ex. 1002 ¶¶ 49–52). Because Patent Owner did not file a Preliminary Response, Patent Owner does not offer an alternate contention. For purposes of this Decision, we apply Petitioner's proposal. slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“i. Reasons to Combine Petitioner contends Gupta and Murty are analogous references with compatible teaches and that a person of ordinary skill would have recognized that “Murty’s detailed software architecture could be used to improve and enhance the operation of Gupta’s system.” Pet. 13–15. At this stage, Petitioner’s showings of reasons to combine the teachings of Gupta and Murty are unrebutted and are adequate for the purposes of institution.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,327,242 - PTAB · Mar 6, 2024 · IPR2023-01403 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–21 and all petitioned grounds, finding a reasonable likelihood of unpatentability for at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has met that standard.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a Bachelor’s degree in electrical engineering, computer science, or a related field, and three years of experience in the design and analysis of wireless communication systems or equivalent work experience.” Pet. 3 (citing Ex. 10022 ¶¶ 50–53). Petitioner also asserts that “[a]dditional education might compensate for a deficiency in experience, and vice-versa.” Id. Patent Owner did not file a Preliminary Response to the Petition. For this decision, we apply the level of skill proposed by Petitioner. If Patent Owner proposes a different skill level in its response, the parties are encouraged to discuss how those differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“B. Claim Construction 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) (citing” slip op. at 5
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“As for Ground I only, we preliminarily determine that Liu’s disclosures are insufficient to support Petitioner’s argument about the details of Liu’s database, even in view of the knowledge of a person of ordinary skill in the art as reflected in cited evidence. Id. Specifically, apart from Liu’s statement about “one or more databases,” Petitioner has not identified any teachings from Liu that describe the database’s organization. See id. at 18–20. So one of ordinary skill in the art would have had to modify Liu to arrive at tables with rows representing STAs and columns containing the related information described in the Petition. See id. The Petition, however, provides insufficient reasoning and supporting evidence why one of ordinary skill in the art would have done so. See id. at 19. Although Petitioner cites Bharghavan and other references discussing databases generally, Petitioner does not propose modifying Liu with any specific features from those” slip op. at 15
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,468,025 - PTAB · Feb 20, 2024 · IPR2023-01210 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1, 15, 18, 41, and 52 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition. Our factual findings and conclusions at this stage of the proceeding are based on the evidentiary record developed thus far. This is not a final decision as to patentability of the challenged claims. Any final decision will be based on the full trial record, including any response to the Petition timely filed by Patent Owner.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“7. Conclusion We have considered the circumstances and facts before us in view of the Fintiv factors. Because our analysis is fact-driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). We take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11, 6. Evaluating all of the factors on this record, we determine that weight of factors 1, 2, and 4 outweigh the remaining factors. Thus, based on our assessment of the Fintiv factors, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny inter partes review.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 30. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action—the only difference being that although the district court found the corresponding structure for “positioning determining equipment” indefinite, Petitioner applies the corresponding structure proposed by Patent Owner in the Google Action. Ex. 1028, 8, 10–16, 20; Pet. 16. Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”7 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent 7 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 18– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’358 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”). We disagree with these arguments for the reasons discussed below. with the claim language and the specification of the ’358 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See 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
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - PTAB · Feb 20, 2024 · IPR2023-01209 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–3 and 11 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“is finality as that relates to Fintiv issues. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo, Paper 15 at 1–8. The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a” slip op. at 14
- 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). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13–14 (citing Ex. 1012 ¶ 31). Patent Owner does not dispute Petitioner’s definition for the level of ordinary skill in the art. Prelim. Resp. 31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. 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 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”8 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See 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 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104
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.