- PTAB · Feb 11, 2022 · IPR2021-01341 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on claims 1–4 and 7–10, finding a reasonable likelihood of success on the Tan and Boies obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute trial in an inter partes review. We may institute an inter partes review if the information presented in the petition filed under 35 U.S.C. § 311, and any preliminary response filed under § 313, shows that there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 23
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner also argues that Petitioner’s witness, Mr. Andrews, may not be credible because of some past relationship with Petitioner or its related companies. Prelim. Resp. 50–52. Patent Owner offers mere unsubstantiated allegations and cites no persuasive evidence that causes us to question Mr. Andrews’s credibility at this stage of the proceeding.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan would have been a person having, as of October 24, 2001, a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶40.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’994 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,713,994 - PTAB · Feb 11, 2022 · IPR2021-01353 · APJ Ryan H Flax · IPR · Institution
The Board instituted IPR on all challenged claims, 1–7 and 14–16, under all three §103 grounds because Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts: An ordinary artisan as of October 24, 2001 would have been a person having a Bachelor’s degree in Electrical Engineering, Mechanical Engineering, Computer Engineering, or Computer Science, or an equivalent degree with at least two years of experience in electronic user interface systems and vehicle sensor systems or related technologies. Additional education may substitute for lesser work experience and vice-versa. (Ex.1003, ¶19.) Pet. 3 (citing Andrews Declaration). Patent Owner does not address the definition of the person of ordinary skill in the art, either to contest Petitioner’s proposal or to offer a different definition. See generally Prelim. Resp. For the purposes of this Institution Decision, we accept Petitioner’s unopposed, proposed definition of the person of ordinary skill in the art (or ordinarily skilled artisan), which appears to be consistent with the level of skill in the art reflected in the prior art of record and the disclosure of the ’709 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“the prior art itself [may] reflect[] an appropriate level” as evidence of the ordinary level of skill in the art) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). B.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“one of ordinary skill in the art, and therefore no claim construction is necessary at this time.” Pet. 5. Patent Owner argues that Petitioner appears to provide some interpretation of the claims in its challenges and states that Petitioner’s assertion that the claims carry their plain and ordinary meaning is “flawed,” but does not expressly assert that any claim language requires express construction by the Board. See Prelim. Resp. 9–10, and generally. At this stage of the proceeding, we do not find it necessary to construe any claim language. The language of the claims appears to be readily understandable on its face. If any claim language is in dispute at trial, we encourage the parties to further develop the record thereon. C.” slip op. at 26
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,532,709 - PTAB · Jan 13, 2022 · IPR2021-01215 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–24 and all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim, including over Yoshimura and Srinivas.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv, Paper 11 at 6. On the record before us, Petitioner has not produced evidence that a stay for the results of the instant inter partes review has been requested. The district court stay currently in force is for a limited time, until February 2022. Thus, the stay will expire approximately one month after issuance of this decision on institution. The effect of the current stay on the pending inter partes review proceeding would be extremely minimal, and would not appear to meaningfully allay any concerns of inefficiency or duplication of efforts. Furthermore, the parties’ reliance on other cases in which the district court judge considered requests for stay is misplaced. As the Board has explained, “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 12 (PTAB May 13, 2020) (informative) (“Fintiv II”). “We decline to infer, based on actions taken in a different case with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. Accordingly, we find that this factor is neutral; i.e., it does not weigh for or against exercising our discretion to deny institution.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review (“IPR”) of claims 1–24 of U.S. Patent No. 8,407,655 B2 (Ex. 1001, “the ’655 patent”). Paper 2 (“Pet.”). Patent Owner, Synopsys, Inc., (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). 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) (2018). An inter partes review may not be instituted on fewer than all claims challenged in the Petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). Having considered the Petition and the Preliminary Response, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–24 of the ’655 patent as unpatentable under 35 U.S.C. §103(a). Pursuant to § 314, we institute an inter partes review as to claims 1–24 of the ’655 patent on all grounds raised in the Petition.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“At this stage of the proceeding, for purposes of institution, Petitioner has provided sufficient explanation, supported by evidence, of how each limitation of these claims is disclosed by Yoshimura. In view of the foregoing, we are persuaded that Petitioner is reasonably likely to prevail on its assertion that claims 1–3, 8, 11–13, 18, 21, and 22 would have been anticipated by Yoshimura.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner alleges that a person having ordinary skill in the art at the time the invention was made would have been motivated to use capacitive load values as a parameter value in Yoshimura, because the capacitive load values at the pins affect the rate at which the pins’ voltage can change, and would be needed to determine whether a timing or power requirement has been violated. Id. (citing Ex. 1003 ¶¶ 180–181). Petitioner further alleges that a person having ordinary skill in the art would have had a reasonable expectation of succeeding in including capacitive load values in Yoshimura’s scenario image and/or multi-scenario ECO database, because Yoshimura’s database already includes similar types of parameter values. Id. at 40–41 (citing Ex. 1003 ¶ 181).” slip op. at 26
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,407,655 - PTAB · Jan 13, 2022 · IPR2021-01213 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–4, 12, 13, and 16–19 based on both § 103 grounds: Block and Mehrotra, and Andreev and Sherwani.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Therefore, weighing the facts in this particular case, including the time invested by the parties and the district court in the parallel litigation, the extent to which the investment in the district court proceeding relates to issues of patent validity, and the timing of the filing of the Petition, we find that this factor weighs marginally, if at all, in favor of exercising discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage of the proceeding, for purposes of institution, Petitioner has provided sufficient explanations and supporting evidence concerning these claims. These explanations identify how each limitation of these claims is taught or suggested by the applied combination of prior art. Petitioner has further provided a rationale for each proposed combination, as well as an explanation how each combination would be accomplished with a reasonable expectation of success. Pet. 27–29.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’614 patent was filed. Pet. 4. For purposes of this proceeding, Petitioner and Petitioner’s expert “adopt the [following] definition for the person of ordinary skill in the art”: a person with “a bachelor’s degree in electrical engineering, computer engineering or electrical and computer engineering or equivalent and two or more years of experience with CMOS VLSI (very large-scale integration) circuit design, electronic design automation for VLSI, or ASIC (application-specific integrated circuit) design fields.” Id. at 11; Ex. 1003 ¶ 70 (Robins Declaration). Petitioner notes that this assessment was presented to the district court by Patent Owner, but that Petitioner has also argued for a higher level of skill in the art. Pet. 11. Here, Patent Owner has not provided an assessment of the level of ordinary skill in the art. See generally Prelim. Resp. To the extent necessary, and for purposes of this Decision, we accept the assessment 2 Patent Owner does not identify any secondary considerations to be considered. Accordingly, we do not consider this aspect of the obviousness analysis at this stage of the proceeding. offered by Petitioner as it is supported by the Robins Declaration and is consistent with the ’614 patent and the asserted prior art.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We apply the same standard that is used to construe a patent claim in a civil action under 35 U.S.C. §282(b), and construe each claim in accordance with the ordinary and customary meaning of such claim, as understood by one of ordinary skill in the art in the context of the patent, and the prosecution history pertaining to the patent, as articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019)). “[W]e need only construe terms ‘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) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). For the purposes of institution, we do not expressly construe any claim terms beyond the extent necessary in our discussion of the parties’ arguments below.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,234,614 - PTAB · Jan 13, 2022 · IPR2021-01212 · APJ Jennifer Meyer Chagnon · IPR · Institution
The Board instituted review of claims 1–8, 11–20, and 23–25 on all petitioned grounds after finding a reasonable likelihood that claim 1 was obvious over Sano.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“a stay for the results of the instant inter partes review has been requested. The district court stay currently in force is for a limited time, until February 2022. Thus, the stay will expire approximately one month after issuance of this decision on institution. The effect of the current stay on the pending inter partes review proceeding would be extremely minimal, and would not appear to meaningfully allay any concerns of inefficiency or duplication of efforts. Furthermore, the parties’ reliance on other cases in which the district court judge considered requests for stay is misplaced. As the Board has explained, “[a] judge determines whether to grant a stay based on the facts of each specific case as presented in the briefs by the parties.” See Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 at 12 (PTAB May 13, 2020) (informative) (“Fintiv DI”). “We decline to infer, based on actions taken in a different case with different facts, how the District Court would rule should a stay be requested by the parties in the parallel case here.” Id. Accordingly, we find that this factor is neutral; i.e., it does not weigh for or against exercising our discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion as to Claim 1 Petitioner’s contentions and cited evidence as to claim 1, summarized above, are persuasive on the preliminary record now before us. As noted, Patent Owner does not present any argument directed to the patentability of the challenged claims at this stage of the proceeding. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that claim 1 would have been obvious in view of Sano. 3. Independent Claims 13 and 25 Independent claims 13 and 25 recite a computer-readable storage medium and computer system, respectively, for generating a clock-tree on an integrated circuit, but otherwise recite limitations similar to those of claim 1. Petitioner relies on the same teachings of Sano for claims 13 and 25 as those discussed above for claim 1. See Pet. 57–58; Ex. 1003 ¶¶ 138, 140–141. Based on the current record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertion that independent claims 13 and 25 would have been obvious in view of Sano.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness.8 Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). An obviousness analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418; accord In re Translogic Tech., Inc., 504 F.3d 1249, 1259 (Fed. Cir. 2007). However, Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). Instead, Petitioner must articulate a reason why a person of ordinary skill in the art would have combined the prior art references. In re NuVasive, 842 F.3d 1376, 1382 (Fed. Cir. 2016). We analyze the asserted grounds of unpatentability in accordance with these principles to determine whether Petitioner has met its burden to establish a reasonable likelihood of success at trial.” slip op. at 20
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,546,567 - Asetek Danmark A/S v. Coolit Systems, Inc.All claims unpatentablePTAB · Sep 30, 2021 · IPR2020-00747 · APJ Scott C Moore · IPR · Final written decision
Claims 1, 2, 3, 5, 7, and 25 are unpatentable as obvious over Lyon and Bezama; the Board did not reach anticipation by Bezama.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner asserts that a person of ordinary skill in the art at the time of the invention of the ’567 Patent (hereinafter, a “POSITA”) would have had the following education and experience: (i) “completed college level course work in thermodynamics, fluid mechanics, and heat transfer,” and (ii) “two or more years of experience in designing liquid cooling systems for computers, servers, or other electronic devices, or very similar technology, or one with a more advanced degree in the above fields may have had less practical experience.” Pet. 11. Patent Owner contends that a POSITA “would have earned at least a bachelor’s degree, such as a B.S. (bachelor of science), or equivalent thereof, in mechanical engineering or a closely related field and possessed at least three years of specialized experience in heat transfer devices for thermal management in electronics and computer systems, or in similar systems.” PO Resp. 4. Patent Owner represents, however, that none of its arguments or its declarant’s opinions turn on any differences between the parties’ alternative formulations concerning the level of ordinary skill in the art. Id. at 4 n.2. In its Reply, Petitioner does not respond to Patent Owner’s alternative formulation, or identify any issues in this case that might turn on differences between the parties’ alternative formulations. See generally Reply. On this record, we adopt Patent Owner’s proposed formulation” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Considering the intrinsic evidence summarized above, and the evidence and arguments presented by the parties, we determine that the claim limitation “a compliant member matingly engaged with the second side of the housing member” is satisfied when at least a portion of the recited compliant member is fitted within the recessed region defined by the second side of the housing member. This partial construction is sufficient to resolve the issues in dispute. On this record, we decline to address the issue of whether “matingly engaged” could also encompass other types of engagement, and we also decline to construe any other claim terms.9 See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs. in the context of an inter partes review). D.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“139); see also Pet. 62 (citing Ex. 1003 ¶ 110) (“Lyon teaches every limitation of the challenged claims, except a compliant material on top of the microchannel fins . . . and a recessed, transverse ‘groove’ on the microchannel fins.”). Petitioner relies on Bezama to supply both of these claim elements, and sets forth rationales for why one of ordinary skill in the art would have had reason to combine these teachings of Bezama with Lyon so as to arrive at the claimed invention. See Pet. 67–68 (citing Ex. 1003 ¶¶ 121–124) (contending that Bezama discloses a recessed transverse groove, and that a POSITA would have known that incorporating such a groove into Lyon’s microchannel walls would have improved fluid flow characteristics); 71–73 (citing Ex. 1003 ¶¶ 128–132) (contending that Bezama discloses that the separator sheet overlying the fins can be made of a compliant material, and that a POSITA would have known that incorporating such a material into Lyon’s Plate 240 would have minimized coolant bypass between the fins and the plate). Patent Owner makes a single patentability argument for claim 1—it contends that neither Lyon nor Bezama discloses a compliant member that is “matingly engaged” with the second side of the housing member. See Resp. 44–49. We find that Petitioner’s contentions regarding the undisputed limitations of claim 1, and the proffered rationales for combining the teachings of Lyon and Bezama, are persuasive and adequately supported. See Pet. 59–77; Ex. 1003 ¶¶ 107–139; see also Paper 11, 8 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”) We now turn to the single disputed limitation of claim 1.” slip op. at 25
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“For the foregoing reasons, we find that Lyon and Bezama teach or suggest all limitations of claim 1, and that Petitioner has set forth adequate rationales for combining the teachings of these references in a manner that would satisfy claim 1. Petitioner has demonstrated by a preponderance of the evidence that claim 1 is unpatentable under 35 U.S.C. § 103. b) Claims 2, 3, 5, 7, and 25 Petitioner also identifies portions of Lyon and Bezama that allegedly teach or suggest each limitation recited in claims 2, 3, 5, 7, and 25, and that these contentions are supported by testimony from Dr. Tilton. See Pet. 78– 84; Ex. 1003 ¶¶ 140–151. Petitioner additionally identifies rationales for why a person of ordinary skill in the art would have had reason to combine the teachings of Lyon and Bezama to arrive at the inventions recited in those claims. See id. Patent Owner does not dispute these contentions or set forth any separate arguments for the patentability of claims 2, 3, 5, 7, and 25, but instead relies solely on its arguments with respect to claim 1. See Resp. 49. Patent Owner’s arguments regarding claim 1 are not persuasive for the reasons set forth above. On this record, we find that Lyon and Bezama teach or suggest all” slip op. at 28
Patent outcomesUS 9,057,567 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,057,567 - Intel Corporation v. Pact XPP Schweiz AGAll claims unpatentablePTAB · Sep 8, 2021 · IPR2020-00540 · APJ Christopher L Ogden · IPR · Final written decision
Claims 1–6, 9, 24, 26, 27, 29, 30, 32, 42, 44, 73, and 74 are unpatentable as obvious under § 103.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“At least with respect to the portions of Dr. Mazumder’s declaration that supports Intel’s arguments on which we rely for our decision, and any cross-examination relevant to that testimony, we disagree that Dr. Mazumder was improperly recalcitrant, or demonstrated a lack of knowledge of the subject matter to the extent that it would discredit him as a credible expert witness. Given the circumstances, we also do not fault Dr. Mazumder for refreshing his recollection during cross-examination. Thus, we do not agree with PACT that we should, as a general proposition, disregard or give less credit to Dr. Mazumder’s testimony for these reasons.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Intel argues that a person of ordinary skill in the art “would have had at least an M.S. degree in electrical engineering, and at least three years of experience with multiprocessor systems design.” Pet. 14 (citing Ex. 1001 ¶ 72). Dr. Mazumder testifies that this level of skill “was the typical level of experience of persons working with multiprocessor systems, including the design of processor, cache, memory, and bus architectures, at the time of the alleged invention.” Ex. 1001 ¶ 72. Dr. Wolfe does not disagree, and in his declaration he applies Dr. Mazumder’s proposed articulation of the level of ordinary skill. See Ex. 2026 ¶ 40. For this decision, we adopt Dr. Mazumder’s uncontested declaratory testimony, which we find consistent with the level of technical expertise assumed by the ’807 patent disclosure and the asserted prior art references.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Neither Intel nor PACT argues that any claim terms need an explicit construction. See Pet. 5 (“Intel does not believe any terms need to be construed to resolve the prior art issues presented in this Petition.”). However, according to Intel, in the co-pending litigation the parties “stipulated that the preambles are not limiting” for all independent claims challenged in the Petition. Id. (citing Ex. 1014). PACT does not challenge this statement, and whether the preambles are limiting does not appear to be material to Intel’s contentions in the Petition. Absent a controversy, we do not need to explicitly construe any terms for our decision. 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))). To the extent that our decision involves interpreting claim language, we discuss that language below in our analysis of the claim limitations.” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“(quoting Medtronic, Inc. v. Barry, 891 F.3d 1368, 1380 (Fed. Cir. 2018)). Indicia on the face of the reference, such as a copyright date or ISBN number, “are considered as part of the totality of evidence.” Id. at 17–18 (citing Nobel Biocare Servs. AG v. Instradent USA, Inc., 903 F.3d 1365, 1377 (Fed. Cir. 2018)). Based on the evidence as a whole, Intel has shown persuasively that the IEEE published the Barroso article in 2000 as part of a physical volume accessible to researchers in the field. In addition to having a copyright notice dated 2000, Barroso is part of a non-consecutively paginated article, bearing the ISBN number “1-58113-232-8.” Ex. 1005, 282. The document also provides instructions for copying and republication, and specifies a copying fee of $5.00. See id. We also find it credible that Mr. Grenier would be familiar with the publication practices of the IEEE in 2000, and the IEEE’s practices with respect to maintaining publication metadata for articles such as Barroso. Although we would reach this conclusion without the new evidence that Intel submitted with its Reply, this new evidence also supports our finding. We find credible the librarian testimony that copies of Barroso were publicly available in two university libraries before the earliest priority date of the ’087 patent. See Exs. 1053, 1054. We also find credible the testimony of Dr. Colwell that Barroso was well-known in the field, and that it is standard practice to submit a physical, bound copy of proceedings at the ISCA conference. Ex. 1055 ¶ 10. So the evidence suggests that about 230 people would have received a bound copy of Barroso at that time. See id. ¶ 9. Dr. Annavaram’s testimony, as a witness appearing on behalf of PACT in another case, corroborates this, although according to him, attendees to the ISCA conferences might have received an electronic copy rather than a bound copy. See Ex. 1051, 165:6–166:5. Thus, we find that Barroso was a printed publication at the time of the claimed invention.” slip op. at 21
Patent outcomesUS 9,037,807 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,037,807 - PTAB · Mar 4, 2021 · IPR2020-00344 · APJ Barry L Grossman · IPR · Rehearing
The Board denied rehearing and upheld denial of institution because Grounds 7, 8, 11, and 12 lacked particularity, justifying denial of the entire petition.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. REQUEST FOR REHEARING When rehearing a decision on institution, the Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of 1 The PTAB E2E docket system correctly identifies the denial of POP review as Paper “11,” dated “October 26, 2020.” This document itself, however, incorrectly states that it is “Paper 10.” In fact, “Paper 10” in the PTAB E2E docket system for this IPR proceeding is Patent Owner’s “RESPONSE TO PETITIONER’S REQUEST FOR REHEARING,” filed on August 21, 2020 See Paper 10. We note that Patent Owner was not authorized to file this response. See Consolidated Office Patent Trial Practice Guide (“Consolidated Practice Guide”), November 2019, 90 (“The opposing party should not file a response to a request for rehearing absent a request from the Board.”). No such request was made by the Board. Accordingly, Paper 10 will be expunged from this record and will not be considered in deciding Petitioner’s Request for Rehearing. discretion may arise if the decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if an unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v. U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). The burdens and requirements of a request for rehearing are stated in 37 C.F.R. § 42.71(d): (d) Rehearing. . . . The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). If an inter partes review is instituted, a final written decision under 35 U.S.C. § 318(a) must decide the patentability of all claims, and all grounds, asserted in the petition. SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018).” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The Petition fails to identify with particularity what disclosure is relied on from each of the references in Grounds 7, 8, 11, and 12, how it would be combined with the other disclosures, and why the proposed combination would have been obvious to a person of ordinary skill in the relevant technology. Without any explanation as to what, how, and why the references would have been combined in Grounds 7, 8, 11, and 12, we, and the Patent Owner, are left to speculate as to the specific details of asserted unpatentability based on combining the references to arrive at the claimed invention. See Paper 7 (“Decision” or “Dec.”), 14 (citation omitted). We determined that “[t]he lack of particularity [in Grounds 7, 8, 11, and 12] infects the proceeding sufficiently that we do not institute an inter partes review.” Id. at 16–17.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“asserted unpatentability of the claims challenged in Grounds 7 and 8, and why it would have been obvious to combine selected disclosures from each of the three references. We have not been directed to any persuasive evidence that the Petition met this burden.” slip op. at 10
- Other 314aInstitution denied discretionary otherDenied
“Petition, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” See, e.g., Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20, 2020) (Precedential). Apple v. Fintiv was decided in the context of evaluating the factors related to a co-pending parallel district court proceeding. The same holistic view applies equally to situations where some claims meet the requirements for instituting a trial and some do not. While we consider the number of claims that fail to meet the statutory and other requirements to institute an inter partes review, as well as the number of claims that meet these requirements, there is no fixed threshold or ratio of claims that meet the requirements compared to those that do not meet the requirements that controls our determination, as suggested by Petitioner (see Req. Reh’g 2. The Patent and Trademark Office addressed this issue in its “SAS Q&As”, which stated: D3. Q: Will the Board institute a petition based on the percentage of claims and grounds that meet the reasonable likelihood standard, e.g., 50%? A: No. The Board does not contemplate a fixed threshold for a sufficient number of challenges for which it will institute. Instead, the panel will evaluate the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system (see 35 USC § 316(b)), the entire petition should be denied under 35 USC § 314(a). Ex. 3003, 8. As explained in our TPG, If a panel determines that a petition meets the standards for institution in relation to fewer than all the challenges presented, or where deficiencies in the petition (such as a failure to provide a construction under 35 U.S.C. § 112(f)) affect only a portion of the challenges presented, the panel will evaluate all the challenges and determine whether, in the interests of efficient administration of the Office and integrity of the patent system, the entire petition should be denied. TPG, 64. Where no trial is instituted, a decision to that effect will be provided, as was done in this proceeding. “The Board expects that the decision will contain a short statement as to why the standards were not met, although this may not be necessary in all cases.” Id. at 64–65.” slip op. at 20
§ 103 obviousnessDiscretionary denialPatents in suitUS 6,918,801 - Eis GmbH v. Novoluto GmbHRehearing grantedPTAB · Sep 25, 2020 · IPR2020-00007 · APJ Susan L C Mitchell · IPR · Rehearing
Granted EIS GMBH’s rehearing request and instituted IPR of claims 1–3, 5, 7, 8, 11, 14, 15, 17–21, and 23–26 on all asserted grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We conclude from a review of Fang and Taylor that they are not substantially the same art nor is Petitioner making substantially the same argument as was presented the Office during prosecution of the ’061 Patent based on Fang. We find that the way in which Fang and Taylor work appear to be materially different. Fang appears to apply only suction to the skin whereas Taylor, with the sealingly connected suction cup, appears to apply a cyclical vacuum that Dr. Prisco testifies meets the claim limitations requiring generation of a pattern of negative and positive pressures, modulated with respect to a reference pressure. Ex. 1002 ¶¶ 62–64, 75. Thus Taylor appears to teach the claim element Patent Owner argued during prosecution was missing from Fang. Also, in applying factors (b) and (d) of Becton, Dickinson, because of such differences noted above, we find that Taylor is not cumulative of Fang, which was considered and applied by the Office during prosecution of the ’061 Patent. 4. Conclusion Thus, we find that Taylor and Fang are not substantially the same art, nor were substantially the same arguments based on these references presented in the Petition and during prosecution of the ’061 Patent, respectively. As discussed above, because Petitioner primarily relies on Taylor in all four grounds for teaching the modulation of positive and negative pressures with respect to a reference pressure as required by all of the challenged claims, we also find that, overall, the same or substantially the same art was not previously presented to the Office nor were the same or substantially the same arguments previously presented to the Office. Therefore, we do not need to reach the application of the remaining Becton, Dickenson factors relating to whether the Petitioner has demonstrated a material error by the Office. Thus, we decline to exercise our discretion under § 325(d) to deny institution of an inter partes review here.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“We find that Dr. Prisco’s testimony is a reasonable interpretation of how Taylor works if the bellows are bidirectional, and the bellows are expanded and contracted when the suction cup is sealingly engaged. Figure 3 of Taylor shown above appears to support Dr. Prisco’s testimony that the bellows may be expanded or contracted from the initial position shown in Figure 3 and does not appear to show any valve or second opening in the bellows to provide unidirectional flow as Dr. Jensen, Patent Owner’s declarant, asserts. Also, as Petitioner asserts, Taylor indicates that a squeeze ball may be substituted for the bellows expressly indicating a device with a bidirectional flow. Although Patent Owner raises valid arguments concerning a common definition of bellows indicating unidirectional flow and provides testimony from Dr. Jensen reasonably supporting such a position, these dueling positions create a genuine issue of material fact that we weigh in favor of Petitioner on institution. See 37 C.F.R. 42.108(c).” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialPatents in suitUS 9,849,061 - PTAB · Jun 16, 2020 · IPR2019-01393 · APJ Ryan H Flax · IPR · Rehearing
Granted Sand Revolution II, LLC’s rehearing request and instituted IPR of claims 1, 2, 4, 6–14, and 16–20 on two obviousness grounds.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“As noted in Fintiv, we consider six factors when taking “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. For the reasons discussed above, the Fintiv factors weigh against invoking our discretion to deny institution. Considering the Fintiv factors as part of a holistic analysis, we are not persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under 35 U.S.C. § 314(a) to deny institution of a potentially meritorious Petition. For the reasons discussed above, we modify our initial decision denying institution. On rehearing, after considering the factors outlined in the precedential order in Fintiv, we decline to deny institution under § 314(a). Accordingly, we grant Petitioner’s Request for Rehearing. We consider the merits of the Petition with respect to the threshold for institution below.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“demonstrating a reasonable likelihood that it would prevail in showing that claims of the ’740 patent are unpatentable. At this preliminary stage of the proceeding and on the record before us, Petitioner’s case is strong on most challenged claims. Fintiv, Paper 11 at 14–15 (“[I]f the merits of a ground raised in the petition seem particularly strong on the preliminary record, this fact has favored institution.”). Although we recognize the record can change during trial, as discussed in detail below, Petitioner has made a sufficiently persuasive showing, on the record presently before us, that the prior art references cited in the Petition teach or suggest all limitations of most challenged claims. We determine, on this preliminary record, that Petitioner has set forth a reasonably strong case for the obviousness of most challenged claims. Thus, this factor weighs in favor of not exercising discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“system” would have been readily understandable to the skilled artisan on its face, and the combination of these words into the recited phrase does not introduce any different meaning or ambiguity. The fact that the mobile storage module comprises the “integrated actuating system,” as well as the inclusion of the word “integrated” in this disputed term, each supports that such a system is a part of the module; in other words, it is built into the module as proposed by Petitioner. Because the fact that the actuating system is built into the mobile storage module is evident from the claim language itself, defining the claim term expressly to include this concept is unnecessary, as it would be redundant of the term’s plain meaning as understood by the skilled artisan. Nothing in the intrinsic record, or other evidence submitted by Petitioner, is inconsistent with this conclusion. Furthermore, regarding the proposed self-deployment concept, we also conclude it is unnecessary to add this concept to define the claim term in view of the plain meaning of “integrated actuating system.” Per the plain language of the claim term, the system that actuates the mobile storage module, i.e., moves it between a lowered and raised position, is integrated into the mobile storage module. The mobile storage module’s integrated components move, or actuate, the mobile storage module, per the plain meaning of the claim language. Thus, the system that is expressly recited as being a part of the module (integrated), actuates the module; the module actuates itself. Therefore, adding “self-deploying” to specially define the term “integrated actuating system” is unnecessary. Nothing in the intrinsic record is inconsistent with this conclusion. See Ex. 1002, 83–91 (arguing the characteristic of “self-deploying” invokes the inclusion of “an integrated actuating system,” but not the converse). Because Petitioner’s proposed construction of “integrated actuating system” would add unnecessary and undesirable redundancy to the claims, we determine that it is unnecessary to expressly construe this claim term at this stage of the proceedings.” slip op. at 32
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“V. CONCLUSION Petitioner demonstrates a reasonable likelihood of prevailing at trial in demonstrating that claims 1, 2, 4, 6–10, 12–14, and 16–20 of the ’740 patent would have been obvious over the prior art combinations set forth in Grounds 1 and 2. Our decision at this stage derives from our review of the preliminary record before us. This decision does not reflect a final determination on the patentability of the claims. ORDER Accordingly, it is hereby: ORDERED that, Petitioner’s Request for Reconsideration is granted; FURTHER ORDERED that, pursuant to 35 U.S.C. § 314, an inter partes review of claims 1, 2, 4, 6–14, and 16–20 of the ’740 patent, in accordance with Grounds 1 and 2 in the Petition, is hereby instituted; and” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 8,944,740
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.