- PTAB · Jan 26, 2022 · IPR2021-01152 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–20 based on three § 103 grounds: Jungck and Bhatia; Jungck, Bhatia, and RFC2003; and Jungck, Bhatia, and Turner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“has yet to enter a case schedule. Even with the arguments and evidence presented, we determine it to be speculative as to whether a stay may be granted if a proceeding is instituted. We reach the same conclusion with respect to Fintiv factor (2), given the speculative nature of the “trial date.” With respect to Fintiv factor (3), we determine that this weighs against discretionary denial; although some discovery has occurred, the parties have not invested significant resources in the district court proceeding. With respect to Fintiv factor (4), the existence of Petitioner’s stipulation regarding the full scope of estoppel is sufficient to suggest that overlap between the proceedings will be minimized. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, paper 12 (PTAB Dec. 1, 2020) 18 (precedential) (“Petitioner’s stipulation here mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions. See Sand Revolution 12. Importantly, Petitioner broadly stipulates to not pursue ‘any ground raised or that could have been reasonably raised.’ Reply 6. As noted in Sand Revolution, such a broad stipulation better addresses concerns of duplicative efforts and potentially conflicting decisions in a much more substantial way. Sand Revolution 12 n.5. Accordingly, Petitioner’s broad stipulation ensures that an inter partes review is a ‘true alternative’ to the district court proceeding. Thus, we find that this factor weighs strongly in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).”) (underlining added). Although Patent Owner asserts that there are deficiencies in Petitioner’s stipulation, those can be addressed through additional stipulations. We determine that Fintiv factor (4) weighs against discretionary denial.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“2. Discretion Under § 325(d) With respect to 35 U.S.C. § 325(d), Petitioner asserts that “[n]one of the art relied upon herein was cited, discussed, or applied in the ’246’s prosecution,” and that the art cited therein is not “the same or substantially the same.” Pet. 7. Patent Owner does not argue that we should deny the Petition under this statutory basis. See Prelim. Resp. As such, we decline to exercise our discretion to deny institution of review under 35 U.S.C. § 325(d).” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the foregoing reasons, Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that at least one claim of the ’246 Patent is unpatentable. IV. ORDER Accordingly, it is: ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–20 of the ’246 Patent on the following asserted grounds:” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding, we find Petitioner’s proposal consistent with the level of ordinary skill in the art reflected by the prior art of record, 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), and, therefore, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art for purposes of this decision.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,091,246 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00205 · APJ Bryan F Moore · IPR · Rehearing
The Board granted Google's rehearing request and instituted IPR on claims 5–7, 9–12, 21–23, 25–28, 37, and 39–42 on all petitioned grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6–7. Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 18. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“E. Obviousness Analysis We determine that Petitioner has shown a reasonable likelihood of establishing the obviousness of the limitations of claim 1 and of claim 5 (which includes the limitations of claim 1) and, on that basis, institute inter partes review of all the Challenged Claims. See 37 C.F.R. § 42.108(a) (“When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims.”). Although dependent claim 5 is the first Challenged Claim in the Petition, we begin our analysis thereof by analyzing its underlying base claim, namely, independent claim 1.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Google LLC v. Ikorongo Technology LLC And Ikorongo Texas LLCRehearing grantedPTAB · Jan 25, 2022 · IPR2021-00204 · APJ Bryan F Moore · IPR · Rehearing
The Board granted rehearing and instituted IPR on claims 1–4, 8, 17–20, 24, 33–36, and 38 on all petition grounds, finding a reasonable likelihood of obviousness.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“as our basis for exercising our discretion to deny institution are no longer in the Western District of Texas. Ex. 1023, 16; Ex. 3003. In the Request for Rehearing, Petitioner argues that (at that time), “[b]ecause the Federal Circuit directed the WDTX to transfer the district court cases to the NDCA [Northern District of California] (Ex-1023 at 16) . . . the cases against LGE and Samsung will be given a new case schedule in the NDCA, delaying not 3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“3 In assessing whether to exercise such discretion, the Board weighs the following factors: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv, Paper 11 at 6. only the trial date but the overall investment in the case by both the parties and the court.” Request 5. We agree. In fact, the cases in NDCA are currently stayed pending an appeal of the Federal Circuit’s Decision. Ex. 3003. In weighing the Fintiv factors, we relied on the involvement of the ’554 patent in the WDTX cases as the basis for our weighing four of six factors and for our holistic assessment of the factors in favor of our exercising our discretion to deny institution. DDI 7–13. However, the WDTX cases no longer provide any basis for exercising our discretion to deny institution.” slip op. at 7
- Parallel petitionsDecided for petitioner
“B. Multiple Petitions In its Preliminary Response, Patent Owner also argues “[t]he Board should exercise its discretion under § 314(a) to deny at least one of Petitioner’s two overlapping petitions. Petitioner concurrently filed two petitions against the ’554 patent: IPR2021-00204 (Petition 1) and IPR2021- 00205 (Petition 2).” Prelim. Resp. 17. Petitioner contends “Petition 2 challenges only claims with an admitted later priority date . . . [and n]one of the claims challenged in Petition 2 are addressed in Petition 1. The two petitions therefore differ materially both in substance and in the defenses Patent Owner may potentially raise, and were needed to comply with the word limits.” Paper 3, 3. Patent Owner argues this reason is moot because Patent Owner “has opted to not raise a priority dispute at the pre-institution stage.” Prelim Resp. 18–20. We determine that Patent Owner may raise a priority challenge post-institution so Petitioner’s reason for two petitions is still valid. Thus, we determine that denial of one of the two petitions is not appropriate in this case.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We are also guided by the principle that we need only construe claim terms if, and to the extent that, it is necessary for the purpose of the proceeding. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The Petition states, “[n]o claim terms need to be construed by the Board at this time.” Pet. 6. Patent Owner “does not propose any claim constructions.” Prelim. Resp. 21. Petitioner does present an implied construction of “location information” which we discuss below, in Section III.E.1.d., in association with Petitioner’s contentions regarding that claim term. Nevertheless, in this Decision, we give the claim terms their ordinary and customary meanings.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,874,554 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01161 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–20 on all petitioned grounds because Petitioner showed a reasonable likelihood of prevailing on obviousness over Philipp and QT60161.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161. 4. Claims 2–20 Because Petitioner has demonstrated a reasonable likelihood of success in proving that at least one claim of the ’251 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (indicating that a decision whether to institute an inter partes review “requires a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every” slip op. at 18
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide because there is a potential dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“implement these functions with a touch screen and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen’ pursuant to the touch screen teachings of QT60161.” Pet. 36.9 More specifically, Petitioner argues that it would have been obvious to apply the timed features of Philipp “to a ‘touch screen’ and to trigger the claimed time duration from detecting a ‘key touch on a/the touch screen.’” Id. at 29. According to Petitioner, a person having ordinary skill in the art would have made such a combination because (1) “the primary timer-based functions described and claimed in the ’251 Patent are not only compatible with the touch screen described in QT60161, but are expressly discussed in QT60161” (id. at 30; see also id. at 3031 (citing Ex. 1001, 6:61– 7:2; Ex. 1017, 7)), 9 The Petition emphasizes the names of prior art references. The emphasis is omitted throughout this Decision. (2) QT60161 and Philipp “are compatible with the same sensor technology” (id. at 31; see also id. at 31–32 (citing Ex. 1017, 5, Figs. 1-1, 1-2; Ex. 1024 ¶ 48, 49; Ex. 1003 ¶ 52; Ex. 1028, Figs. 1b, 7)), (3) both the ’251 patent and QT60161 are directed to saving power after the passage of time (id. at 32–33 (citing Ex. 1001, 4:55–65, 10:41–13:59; Ex. 1017, 11; Ex. 1003 ¶¶ 97– 103)), and (4) implementing Philipp “with QT60161’s touch screen would have yielded predictable results” (id. at 33 (citing Ex. 1003 ¶¶ 97–103)). After reviewing Petitioner’s arguments and information, including the Givargis Declaration (Ex. 1003), which Patent Owner does not address at this stage, we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Philipp and QT60161 teaches each claim limitation recited in claim 1 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. Accordingly, Petitioner has demonstrated, on this record, a reasonable likelihood of prevailing on its assertion that claim 1 is unpatentable over Philipp and QT60161.” slip op. at 17
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportDecided for petitioner
“In evaluating the effective filing date of the ’251 patent, we first address the parties’ respective burdens. In an inter partes review, Petitioner bears the ultimate burden of persuasion regarding unpatentability, which never shifts to patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Dynamic Drinkware also establishes that Petitioner has the initial burden of production to show a reference is prior art. Dynamic Drinkware, 800 F.3d at 1379. However, the burden of production then shifts to Patent Owner to refute Petitioner’s argument by either showing the prior art does not actually render the claims unpatentable or does not qualify as prior art. Id. at 1380. The burden of production then shifts back to Petitioner to respond to Patent Owner’s argument. Id. The Board then evaluates all of the evidence and determines whether Petitioner has satisfied its burden of persuasion regarding unpatentability. Id. We apply the same framework when considering whether the parties have met their respective burdens at this stage of the proceeding. (2) Application of Dynamic Drinkware Based on the current status of the proceedings, we are sufficiently persuaded that Petitioner satisfied its initial burden of production under Dynamic Drinkware. Specifically, Petitioner identifies two claim terms— “touch screen” and “key touch on a/the touch screen”—that are recited in each of the independent claims and were added to the ’274 application. Pet. 10 (citing Ex. 1002, 38–41); see also id. at 11–17. Additionally, as discussed below, Petitioner has also sufficiently shown that the combination of Philipp and QT60161 teaches each of the limitations of the claims of the ’251 patent. See Dynamic Drinkware, 800 F.2d at 1379 (finding Petitioner satisfied its initial burden of production by arguing that the prior art rendered the claims unpatentable). Because Petitioner satisfied its initial burden of production, the burden of production now shifts to Patent Owner to argue or produce evidence that either (1) the prior art does not render the claims unpatentable or (2) that Philipp is not prior art because the asserted claims of the ’251 patent are entitled to the benefit of a filing date (constructive or otherwise) prior to Philipp. See Dynamic Drinkware, 800 F.3d at 1380. Because Patent Owner—as is its right—chose not to file a Patent Owner’s Preliminary Response, for purposes of institution only, Patent Owner did not meet its burden of production to show that the ’251 patent is entitled to a filing date earlier than Philipp.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - Stmicroelectronics, Inc. v. Neodron Ltd.InstitutedPTAB · Dec 15, 2021 · IPR2021-01160 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under 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). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” PTAB Rules of Practice for Instituting on All Challenged Patent Claims and All Grounds and Eliminating the Presumption at Institution Favoring Petitioner as to Testimonial Evidence, 85 Fed. Reg. 79,120, 79,129 (Dec. 9, 2020) (codified at 37 C.F.R. § 42.108(a) (2021)).” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that “more than one petition may be necessary, including for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” Id. Because there is a dispute about the effective filing date of the ’251 patent, which may require arguments to be made under multiple prior art references, the present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. See Paper 3, 2–3. Moreover, Patent Owner has not requested that we exercise our discretion to only consider, at most, one petition. Accordingly, we do not exercise our discretion to deny this Petition under § 314(a). E.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have been a person having at least a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of human-machine interfaces such as touch sensors and the firmware or system software that govern said interfaces, or the equivalent, with additional education substituting for experience and vice versa. Pet. 2 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not address this issue. For purposes of this Decision, we adopt the level of ordinary skill in the art that Petitioner proffers, except that we delete the qualifiers “at least” to eliminate vagueness as to the amount of education and practical experience. The qualifiers expand the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.7 C.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for two terms. See Pet. 11–16. Because no express construction is needed to resolve any dispute in this proceeding, we do not construe any of the claim limitations. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). D.” slip op. at 10
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,749,251 - PTAB · Dec 13, 2021 · IPR2021-01128 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, and 14–19 on all petitioned grounds, after finding a reasonable likelihood of success on the § 103 grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the same articulation of the level of ordinary skill in the art that the Administrative Law Judge adopted in the related ITC proceeding, which is as follows: one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl. ¶ 30. This articulation of the level of ordinary skill is consistent with the problems and solutions in the ’173 patent and the prior art of record. Therefore, we adopt the proposed articulation of the level of ordinary skill in the art 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
“Although a number of ’173 patent claim terms have been construed in the related ITC proceeding, Petitioner contends that we do not need to explicitly construe any claim terms. Pet. 6–7. In particular, the constructions for the selected terms in the related ITC proceeding are as follows, according to Petitioner. Term Construction a sensing element that com-a physical electrical sensing element prises a sensing path that com-made of conductive substances that prises a length comprises a path for sensing that is determined for each use that com-prises a length object either an inanimate object, such as a wiper, pointer, or stylus, or alterna-tively, a human finger or other ap-pendage any of whose presence ad-jacent the element will create a lo-calized capacitive coupling from a region of the element back to a cir-cuit reference via any circuitous path, whether galvanically or nongalvanically displacement distance and direction of movement Pet. 6−7. Petitioner does not dispute these constructions (id.), which we find reasonable at this juncture. Therefore, we preliminarily adopt these constructions for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At our discretion, we may institute an inter partes review 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) (2018). Applying that standard, we institute an inter partes review of all asserted grounds and all challenged claims of the ’173 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record, including any timely response by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Further, to the extent the range of parameter values is not expressly or inherently taught by Trent, Petitioner argues that it would have been obvious to set a parameter to an initial value within a range that is associated with the length of the sensing path. Id. Relying on testimony of Dr. Bederson, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the volume control knob of Trent’s Figure 36 (reproduced above in our overview of Trent) with functionality that sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005 ¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent identifies, as part of the prior art “solutions” to the problem of the invention, a two-dimensional sensor in which users can slide their fingers to generate scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a person of ordinary skill in the art would have understood that such a sensor would set a parameter to an initial value as recited in the claims. See Bederson Decl. ¶ 93. We find Petitioner’s arguments, and Dr. Bederson’s supporting testimony on the above points, sufficiently persuasive at this preliminary stage to show by a reasonable likelihood that Trent discloses or teaches the Setting Parameter Limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,432,173 - PTAB · Dec 1, 2021 · IPR2021-00943 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 5–9, 11, 12, 16–20, and 22 based on a reasonable likelihood that the combination of the 300 reference, the 321 reference, and Ericsson renders claim 12 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petition is not materially different from the prior art presented to the Examiner because the basis for the sole challenge in the Petition is a combination of references listed in the IDS. Pet. 3–4. Thus, we determine that the Petition uses “the same or substantially the same” art compared to what was previously presented to the Office, which satisfies part one of the framework. See Advanced Bionics, Paper 6 at 8. 2. Part Two of the Advanced Bionics Framework Under part two, we must determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id. at 8. For the reasons discussed in this section,” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Yet Patent Owner does not provide a basis for its definition. By contrast, Petitioner’s definition is supported by the Min declaration. See Pet. 12 (citing Min Decl. ¶ 34). Also, Patent Owner does not specifically explain how its proposed definition affects Petitioner’s obviousness analysis. See Prelim. Resp. 36. Rather, Patent Owner argues “even under Samsung’s proposal, the level of ordinary skill in the art does not comport with Samsung’s assertion of obviousness.” Id. Considering the types of problems and solutions described in the ’120 Patent and the cited prior art, we preliminarily agree with Petitioner’s proposed definition of the level of ordinary skill in the art. Pet. 12. During trial, however, the parties are encouraged to explain how the differences between Patent Owner’s proposed definition and Petitioner’s affect the obviousness analysis.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Rather, Petitioner’s “only when” construction is adequately supported on this record. Pet. 12–13. Specifically, we preliminarily agree that the first “transmitting” step appears to be independent of the later three “transmitting” steps. Id. at 13. The later three steps cover the potential scenarios other than the first transmitting step in which the UL Grant is that the claimed user equipment must transmit one of the Msg3 buffer data or new data—not both. See id. In this way, the claim language adequately supports Petitioner’s assertion that the “when” clause in the first transmitting step introduces a necessary condition, at this stage and on this record. See id. at 13–14. Thus, we adopt Petitioner’s “only when” construction for the purpose of determining whether to institute. See id.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Motivation foundInstituted
“Patent Owner’s argument, though, does not fully address Petitioner’s obviousness rationale, which relies on the 321 reference as well as other teachings from several other sources. See Pet. at 32–37. At this stage, we preliminarily agree with Petitioner that the 321 reference does not state what happens if a UE receives two uplink grants during an ongoing random access procedure. Id. at 31. Petitioner asserts that it would have been obvious to transmit Msg3 only when there was Msg3 data to transmit and the UE had received an uplink grant in a random access response. Id. at 33. To be sure, Patent Owner does address Petitioner’s obviousness rationale by arguing that it is based on improper hindsight. Prelim. Resp. 34– 37. Patent Owner argues that Petitioner’s “suggestion that a POSITA would find the solution to the problem of improper transmission of Msg3 data obvious in view of the then-existing draft of the LTE standard is incorrect.” Id. at 34. Patent Owner argues that “[b]y claiming that there was no problem to be solved and that the draft LTE standard already addressed the potential for erroneous Msg3 data transmission, [Petitioner] essentially argues that the inventors and the LTE Working Groups did not know how the standard and based on improper hindsight. Id. at 36–37. At this stage, we determine that Petitioner’s obviousness rationale is adequately supported by the preliminary record: The 321 reference states, “If the UE receives both a grant for its RA-RNTI and a grant for its C-RNTI, the UE may choose to continue with either the grant for its RA-RNTI or the grant for its C-RNTI.” Ex. 1003, § 5.4.1, quoted in Pet. 32. The 321 reference calls the RA-RNTI grant an uplink grant in a random access response and calls the C-RNTI grant the uplink grant in a PDCCH. See, e.g., id. §§ 3.1 (“UE shall monitor the PDCCH after the uplink message containing the C-RNTI MAC”), 4.5.2 (“RA-RNTI for Random Access Response on DL-SCH”), cited in Min Decl. ¶ 99. In at least this way, the 321 reference supports Petitioner’s reasoning. See Pet. 32. Petitioner’s obviousness rationale is further supported by the 300” slip op. at 21
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,517,120 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00883 · APJ Neil T Powell · IPR · Institution
The Board instituted IPR on claims 1–9, 11–20, 22–28, and 30 based on the §103 ground over Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and the associated evidence, for the reasons described below, we institute inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the application from which the ’192 patent issued was filed after that date, with no benefit claim prior to that date, the AIA version of § 103 applies. 4 Ji et al., Chinese Patent Application Publication No. CN 105553834 A, published May 4, 2016 (Ex. 1005 (original publication), Ex. 1006 (certified English translation), “Ji”). 5 Sarafa et al., Published U.S. Patent Application No. 2018/0159812 A1, published June 7, 2018 (Ex. 1007, “Sarafa”). 6 Oh et al., Published U.S. Patent Application No. 2014/0143684 A1, published May 22, 2014 (Ex. 1008, “Oh”). directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s arguments about the meaning of “reference” are more correct. Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review). At the same time, we find one aspect of Patent Owner’s arguments regarding the construction of “reference” warrants some discussion. To the extent that Patent Owner views the term “reference” as coextensive with the term “link,” we have reason to believe the scope of the term “reference” may differ from the scope of the term “link.” As Patent Owner observes, the ’192 patent discloses “[b]y ‘reference’ what is meant is that there is a connection between the second message and the first message. The connection may be for example a link.” Ex. 1001, 4:25–27; Prelim. Resp. 14. Even if this disclosure indicates that a link is a type of reference, it does not say that every reference is a link. Indeed, the ’192 patent’s disclosure of “a (reference) object . . . that links or otherwise references a chat message” may suggest the terms “link” and “reference” are not coextensive. Ex. 1001, 3:26–29. For example, this disclosure may suggest that a reference can be but need not be a link. The parties are asked to address this observation during the trial.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Additionally, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for modifying Ji’s system to use a reference in the manner disclosed by Sarafa. Pet. 14–18, 20–24, 50–53. Similarly, we find Petitioner has shown sufficiently that a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for combining the cited portions of Oh’s disclosure with the disclosures of Ji and Sarafa. Id. at 18–20, 24–26, 38–44. At this stage, Patent Owner does not dispute that it would have been obvious to combine the cited portions of the disclosures of Ji, Sarafa, and Oh. Furthermore, we find a reasonable likelihood that Petitioner will establish that the allegedly obvious combination of Ji’s, Sarafa’s, and Oh’s disclosures would have resulted in a messaging system implementing a reference in all the ways recited in the challenged claims. At this stage, our review of the record does not reveal an apparent distinction between the challenged claims and a system that would have resulted from combining the disclosures of Ji, Sarafa, and Oh in the manner proposed by Petitioner. Here again, Patent Owner does not address Sarafa, Oh or the proposed combination of their disclosures with Ji; Patent Owner only argues Ji does not disclose a reference. In sum, based on the proposed combination of the references’ teachings, Petitioner has demonstrated a reasonable likelihood of prevailing on its obviousness assertions, even if Ji does not disclose a reference.” slip op. at 37
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,728,192 - Meta Platforms, Inc. v. Wrinkl, Inc.InstitutedPTAB · Nov 23, 2021 · IPR2021-00882 · APJ Neil T Powell · IPR · Institution
The Board instituted inter partes review of claims 1–23 on both obviousness grounds: Ji and Sarafa, and Ji, Sarafa, and Oh.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 12–13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s proposed construction of “link” is more accurate. Additionally, there is presently no dispute regarding the claim language “changing display of information.” Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,860,198 - PTAB · Oct 26, 2021 · IPR2021-00715 · APJ Christopher L Ogden · IPR · Institution
The Board instituted inter partes review of claims 8, 13–16, and 18 on both obviousness grounds because Roku showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“(see Prelim. Resp. 49), a decision instituting or denying inter partes review in this proceeding is due by October 28, 2021. See 35 U.S.C. § 314(b)(1). Because the trial date in the parallel district court proceeding is set for roughly six months before the Board’s statutory deadline for issuing a final written decision, this factor weighs in favor of denying institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“at this stage, that a person of ordinary skill in the art would have had reason to modify Larsson’s system by incorporating encryption as taught in Ortiz, to achieve limitation 8[m] with a reasonable expectation of success. And for all the above reasons, having considered Roku’s arguments and supporting declaratory testimony regarding claim 8 as a whole and Flexiworld’s responsive arguments and evidence, we determine that Roku has shown that there is a reasonable likelihood that it would prevail with respect to claim 8.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field with at least two years of experience developing software,” and “[a] person with less education but more relevant practical experience may also meet this standard.” Pet. 12 (citing Ex. 1002 ¶¶ 24–25). Flexiworld does not address the level of ordinary skill in the art in its Preliminary Response. Because Roku’s uncontested articulation of that level of skill is supported by testimonial evidence and appears reasonable at this stage in light of the subject matter of the ’114 patent, we adopt it for this decision. If Flexiworld contests this articulation at trial, we will consider any evidence that Flexiworld submits, in light of the full trial record.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“dispute the construction of “one or more servers” and “one or more devices.” Pet. 11. But Roku argues that these constructions are irrelevant for this proceeding, and Roku “does not believe that any claim constructions are needed.” Id. Flexiworld also refers to this dispute in the Related Action, but does not propose explicit constructions for these or any other terms. See Prelim. Resp. 8 (citing Ex. 2010). We agree that the meaning of “one or more servers” and “one or more devices” is not pertinent to the outcome of our decision. To the extent any term needs construction, we address the term in the arguments below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,346,114
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.