- Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - PTAB · Feb 27, 2024 · IPR2023-01311 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–20 based on all petitioned challenges, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the asserted prior art. We analyze Petitioner’s asserted challenges with the above-noted principles in mind.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “believes that no claim term requires construction.” Pet. 8–9. Patent Owner similarly asserts that it “does not believe any claim construction is necessary.” Prelim. Resp. 5. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. 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 10 At this stage, neither party presents any objective indicia of non-obviousness. controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we disagree with Patent Owner. Regarding the arrangement of optical components in its backlight unit, Kobayashi specifies, for example, distance a from LED 1 to diffusing plate 5 and distance c from LED 1 to diffusing plate 4. Ex. 1006 ¶¶ 19–20, Fig. 1. Tabito teaches using optical stud members 25 to keep light diffusing plate 23 at a preset distance from light diffusing conducting plate 21. Ex. 1007 ¶ 60. That Kobayashi and Tabito both describe specific arrangements of optical components, and that the use of Tabito’s optical stud members was a known way to provide for such specific arrangements, is sufficient reason for combining Kobayashi and Tabito. Petitioner need only show that Tabito’s optical stud members would have been a “suitable option” for implementation in Kobayashi’s backlight unit. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). We note Patent Owner’s contention that combining Kobayashi and Tabito “would result in completely different optical characteristics of [Kobayashi’s] lighting panel.” Prelim. Resp. 23. This contention, however, is unavailing. Our reviewing court has explained that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but, “[r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Here, Kobayashi teaches keeping its diffusing plates 4, 5 and LED 1 separated by specific distances. Ex. 1006 ¶¶ 19–20. Tabito teaches using its optical stud members 25 to keep optical elements separated by a preset distance. Ex. 1007 ¶ 60. We find that an ordinarily skilled artisan, in implementing Tabito’s optical stud members in Kobayashi’s backlight unit, would have made any necessary modifications (e.g., selecting different materials for the optical stud members) to maintain Kobayashi’s desired backlight performance in order to realize the advantages of using Tabito’s optical stud members as a way to support Kobayashi’s diffusing plates. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Kobayashi and Tabito teaches the recited limitations of claims 4–6 and 17, including the recited “diffuser supports.” See Pet. 34–41. We also are persuaded that Petitioner’s proffered reasoning for modifying Kobayashi’s backlight unit to include Tabito’s optical stud members, namely, to provide a way to implement Kobayashi’s specific arrangement of optical elements, is sufficient for purposes of this Decision. See Pet. 33; Intel, 61 F.4th at 1381 (explaining that the petitioner need only show that the proposed combination would have provided a “suitable option”).” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,177,382 - PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - PTAB · Jan 23, 2024 · IPR2023-01168 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–5 and 7–14 under all asserted obviousness grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“On the record before us, we determine that the second part of Patent Owner’s proposed construction is overly narrow. The claim language recites nothing about air gaps, let alone excluding air gaps between layers. Ex. 1001, claim 1. As our reviewing court has explained, “it is the claims[] . . . which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). Additionally, the ’835 patent says that “intervening elements may also be present.” Ex. 1001, 6:66–7:3. 9 Patent Owner cites “’075 Pat., col. 6:47–51,” which does not appear to be of record. The quoted language appears at Ex. 1001, 6:66–7:3. The ’835 patent does not say anything about excluding air gaps between layers. Accordingly, we see no reason why an intervening element would exclude an air gap.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Patent Owner. Although a larger distance between the diffuser and the reflective surface of the base panel may improve light uniformity, Patent Owner essentially alleges there would be tradeoffs in combining Mok and Holman to reduce panel thickness. Our reviewing court, however, has explained that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). The relative advantages (e.g., reduced panel thickness) and disadvantages (e.g., reduced light uniformity) of modifying Mok’s lighting panel to include Holman’s stacking arrangement amount to a tradeoff, a decision well within the level of an ordinarily skilled artisan. Indeed, Mok acknowledges this tradeoff. See Ex. 1005 ¶ 23 (“Generally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.”). Accordingly, Patent Owner’s teaching away argument does not undermine Petitioner’s showing for limitation 1D. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that limitation 1D is satisfied under both theories. With respect to Petitioner’s first theory, we are persuaded that Mok’s brightness enhancer 18 teaches the recited “brightness enhancement film” of limitation 1D. With respect to Petitioner’s second theory, we are persuaded that Petitioner’s proposed combination of Mok and Holman teaches the recited “brightness enhancement film” of limitation 1D. We also are persuaded that Petitioner’s proffered reasoning for modifying Mok’s lighting panel to include Holman’s stacking arrangement, namely, to reduce panel thickness, is sufficient to support institution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing at least one of the challenged claims of the ’835 patent is unpatentable. Although we express concerns regarding Petitioner’s analysis regarding certain of the challenges presented, we institute trial on all challenged claims and all challenges presented. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”); 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”). We have not, however, made a final determination with respect to the patentability of the challenged claims or the constructions of any claim terms. V. ORDER For the reasons given, it is ORDERED that inter partes review is instituted as to all challenged claims of the ’835 patent, namely, claims 1–5 and 7–14, based on all challenges presented in the Petition; and” slip op. at 61
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,605,835 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Jan 22, 2024 · IPR2023-01150 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–21 on all seven asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Although Shaffer was cited by the examiner during prosecution, it was not discussed in any meaningful regard on the record, as explained above.” Pet. 11. Petitioner cites Advanced Bionics’ holding that, “[i]f the record of the Office’s previous consideration of the art is not well-developed or silent, then a petitioner may show the Office erred by overlooking something persuasive.” Id. (citing Advanced Bionics, 10). Petitioner specifically asserts the Examiner erred because Shaffer discloses the precise features that the examiner identified as novel (high-power and low-power modes), which, in combination with the art teaching other known features (e.g., a reed switch), demonstrates that the challenged claims are unpatentable. . . . By overlooking the specific teachings of Shaffer in allowing the challenged claims, the examiner committed a material error even if it could be argued that Shaffer was considered. Pet. 12 (internal citations omitted). See Advanced Bionics, 8 n.9 (“An example of a material error may include misapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”). We find that Petitioner has demonstrated a material error by the Office in the prior consideration of Shaffer. Under the second prong of Advanced Bionics, we consider “the extent to which the asserted art was for rejection.” Becton, Dickinson, 17. Here, we agree with Petitioner that, although Shaffer was cited by the Examiner on a form PTO-892, Shaffer was not applied as a prior art reference in any rejection because claims 1–20 in the application leading to the ʼ895 patent were allowed in a first action allowance and then, after filing a Request for Continued Examination (RCE), claim 21 was added, and subsequently claims 1–21 were allowed and issued in the ʼ853 patent with no further discussion of Shaffer or any other reference. See, generally Ex. 1008; and see Pet. 10. slip op. at 15
- 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4 (2023). Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Therefore, we institute an inter partes review of all challenged claims 1 through 21 of the ’853 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Supported by the testimony of Dr. Kiaei, Petitioner asserts the level of ordinary skill in the art corresponds to a person having “a bachelor’s degree in Electrical Engineering, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and battery systems, 11 The current record does not include evidence of objective indicia of nonobviousness (secondary considerations). See generally Pet., Ex. 1002, and Prelim. Resp. aids.” Pet. 17 (citing Ex. 1002 ¶ 25). At this stage, Patent Owner “applies Petitioner’s definition of a [person of ordinary skill in the art] POSITA” (Prelim. Resp. 16 (citing Pet. 17), but “reserves the right to present issues relating to the level of a POSITA should the Board institute this IPR.” Prelim. Resp. 16. Based on the current record, and for purposes of this Decision, we preliminarily adopt Petitioner’s position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. On this record, we are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’853 patent and the asserted prior art. This definition also is supported by the testimony of Dr. Kiaei. See Ex. 1002 ¶ 25.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“13, and 17–21, we disagree with Patent Owner’s narrow construction requiring that the smart case be construed as including a rechargeable battery utilized to charge a wireless device, because such a construction ignores intrinsic evidence of multiple additional configurations, actions, or functionality of the smart case disclosed in the ʼ853 patent. These functions, other than charging a wireless device, include preserving battery life of the wireless earpieces, communication with the wireless earpieces through physical interactions or wireless connections, standards, or protocols, configured to store data. See Ex. 1001, 2:38–57.12 More importantly, we note the disclosure of only an illustrative embodiment in the ʼ853 patent that includes a presumably rechargeable battery, i.e., “[t]he smart case 102 encloses a battery, and various other circuitry (not shown). . . . For example, the battery of the smart case 102 may be utilized to charge the wireless earpieces 142, 144 any number of times before the smart case 102 and corresponding battery may require charging.” Ex. 1001, 3:25–34. However, as quoted below, we note the ʼ853 patent also discloses alternative embodiments of the smart case that do not require a rechargeable battery to recharge a wireless device: The smart case 402 may have any number of configurations and include various circuitry, connections, and other components. The smart case 402 is one potential embodiment of the smart case 102 of FIGS. 1–3. In one embodiment, the smart case 402 may include a battery 404, a logic engine 406, a memory 408, interfaces 410, 411, a transceiver 412, and a magnet 414. The battery 404 is a power storage device configured to charge the power storage system of the wireless earpieces 401 once or multiple times. In other embodiments, the battery 404 as well as the batteries of the wireless earpieces 401 may represent a fuel cell, thermal electric generator, piezo electric charger, solar charger, ultra-capacitor, or other existing or developing power storage technologies.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,843,853 - Microsoft Corporation v. Softex, LLCInstitutedPTAB · Jan 17, 2024 · IPR2023-01185 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–25, finding a reasonable likelihood that claims 1–5, 7–13, 15–21, and 23–25 are obvious over Andrews and the other asserted grounds warrant review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“This inquiry, however, is not always necessary at the institution stage. As the Board explained in a precedential decision, the failure to name a real party in interest is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB March 4, 2016) (precedential). The Board in another precedential decision explained that, at the institution stage, we need not address whether a party is an unnamed RPI unless the time bar or estoppel provisions under 35 U.S.C. § 315 would be implicated. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential). In SharkNinja, there was “no allegation that Petitioner’s failure to name [the third party] as an RPI should result in termination of the proceeding or denial of institution for review other than” for an alleged procedural violation of 35 U.S.C. § 312(a)(2), nor was there any “allegation or evidence that [the third party] [wa]s barred or estopped from th[at] proceeding, or that Petitioner purposefully omitted [the third party] to gain some advantage.” Id. at 18–20 (footnote omitted). Due to the lack of allegations regarding either a time bar or estoppel, the Board declined to decide the RPI issue at the institution stage because deferring that decision for after institution “better serves the interest of cost and efficiency.” Id. at 19–20 (footnote omitted). In its Preliminary Response, although Patent Owner makes a passing reference to “estoppel” (Prelim. Resp. 26 (“engaging in bad faith gamesmanship by attempting to shield clear beneficiaries from estoppel implications”)), Patent Owner does not set forth any allegations regarding time bar or estoppel with respect to Petitioner’s alleged failure to name the PC Manufacturers as RPIs. We agree with Petitioner that “[w]hether such third parties are real parties-in-interest should not be resolved in this proceeding because it has no impact on this proceeding,” and that “a determination that these parties are real parties-in-interest would not result in the application of any estoppel or time-bar under 35 U.S.C. § 315.” Pet. vii (citing Unified Patent, Paper 76, 5). In its Sur-reply, Patent Owner adds that Petitioner “obtained the PC Manufacturer’s contentions, copied them, and refused to be estopped,” wherein “[h]ad the PC Manufacturers been properly listed as RPIs, they would unquestionably be estopped.” PO Prelim. Sur-reply 3. However, Patent Owner’s speculation as to PC Manufacturers’ future estoppel does not set forth an allegation of estoppel in this proceeding. As Petitioner points out, “the PC Manufacturers have not filed (or been RPI) in any other proceeding before the Board regarding, nor filed civil actions asserting invalidity of, the ’649 patent.” Pet. Prelim. Reply 2. Further, as Patent Owner acknowledges, the district court proceedings in the Texas litigations against PC Manufacturers were filed on December 14, 2022, less than one year before Petitioner filed this IPR petition. Prelim. Resp. 19–20. As Petitioner further points out, “[t]he PC Manufacturers were not time-barred at filing, and [Petitioner] can amend its mandatory notices if required and maintain its original filing date.” Pet. Prelim Reply 2. Therefore, neither § 315(b) nor any other estoppel or time bar would have precluded PC Manufacturers from petitioning for IPR on their own at the time of filing of this Petition. Without an implication of time bar or estoppel provisions under 35 U.S.C. § 315 in this proceeding, we decline to decide whether the PC Manufacturers should have been named RPIs in this Petition at the institution stage.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider 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. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person having ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner contends that “no express constructions are necessary.” Pet. 9 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner contends that it “does not believe express claim construction is necessary for any claim terms because no terms are in controversy.” Prelim. Resp. 18. At this time, we determine that no terms of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., 200 F.3d at 803)).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion For the foregoing reasons, we determine that the evidence and arguments presented show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7–13, 15–21, 23–25 would have been obvious over Andrews. (2) Anticipation by Andrews Petitioner contends that claims 1–5, 7–13, 15–21, 23–25 of the ’649 patent also are anticipated by Andrews, but provides the same arguments discussed above for the obviousness grounds. Pet. 9–48. Patent Owner responds with the same arguments discussed above for the obviousness ground based on Andrews. Prelim. Resp. 39–49. Thus, at this stage of the proceeding, we do not separately address Petitioner’s anticipation ground based on Andrews. Nonetheless, Patent Owner may raise arguments regarding this anticipation ground in the Response after institution.” slip op. at 40
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 8,506,649 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Dec 21, 2023 · IPR2023-01334 · APJ Michelle N Wormmeester · IPR · Institution
Instituted review of claims 1–30 as obvious over Kester and Honig, with Kennedy for claims 3–6 and 15–18, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), 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.” For the reasons that follow, we institute an inter partes review of the challenged claims and grant the Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“petition is time-barred.” Prelim. Resp. 2. Patent Owner asserts that “by the time the Board issues its institution decision in the instant proceeding, the [289] IPR will likely be terminated,” as Patent Owner and the petitioner in the 289 IPR “have already resolved their disputes with respect to the ’250 patent and jointly filed a motion to terminate the [289] IPR.” Id. at 3. Patent Owner’s argument is unavailing. The 289 IPR was instituted on July 21, 2023, and Petitioner filed its joinder motion on August 18, 2023, before the joint motion to terminate in the 289 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 289 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 289 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“This argument also is unavailing. Since the filing of Patent Owner’s Preliminary Response in this proceeding, Petitioner has updated its mandatory notices to include Kaspersky Labs Limited and Kaspersky Lab Switzerland GmbH as real parties in interest “out of an abundance of caution.”5 Paper 8, 5. Moreover, we need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 289 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 4
- Other 314aDecided for petitioner
“Patent Owner further argues that we should discretionarily deny the Petition under 35 U.S.C. § 314(a) for the “same reasons” set forth in its preliminary response in the 289 IPR. We have already found those reasons insufficient to support exercising our discretion to deny institution. Thus, for the reasons given in our institution decision in the 289 IPR, we decline to exercise our discretion to deny institution here. See 289 IPR, Paper 7.” slip op. at 5
Discretionary denialPatents in suitUS 8,418,250 - Ao Kaspersky Lab v. Open Text Inc.InstitutedPTAB · Dec 21, 2023 · IPR2023-01199 · APJ Michelle N Wormmeester · IPR · Institution
Instituted review of claims 1–4, 7–10, 12, and 15–18 on all petitioned grounds, and granted AO Kaspersky Lab’s motion to join IPR2023-00124.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Patent Owner’s argument is unavailing. Our rules specifically prohibit incorporation by reference. See 37 C.F.R. § 42.6(a)(3) (“Arguments must not be incorporated by reference from one document into another document. Combined motions, oppositions, replies, or other combined documents are not permitted.”). We therefore decline to consider, at this 2 Morris et al., U.S. Publ’n No. 2007/0016953 A1, published Jan. 18, 2007 (Ex. 1005). 3 van Oorschot et al., U.S. Patent No. 8,087,087 B1, issued Dec. 27, 2011 (Ex. 1006). 4 Capalik et al., U.S. Publ’n No. 2011/0321166 A1, published Dec. 29, 2011 (Ex. 1008). stage, the arguments presented in the Patent Owner Response in the 124 IPR. Because Patent Owner does not offer other arguments on the merits, for the reasons given in our institution decision in the 124 IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner will prevail in showing that the challenged claims would have been obvious. See 124 IPR, Paper 11.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013). As noted above, the Petition asserts the same unpatentability grounds on which we instituted review in the 124 IPR, relying on substantially the same evidence.6 Joinder Mot. 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00124 cease to participate in the instituted [124] IPR proceeding, [Petitioner] will not assume an active role.” Id. at 7–9. Petitioner represents that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner’s] joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [124] IPR Scheduling Order.” Id. at 6– 7. We agree with Petitioner that joinder with the 124 IPR is appropriate under these circumstances. Patent Owner did not file an opposition to Petitioner’s joinder motion. Accordingly, we grant the joinder motion.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for patent owner
“Patent Owner’s argument in this regard also is unavailing. The 124 IPR was instituted on June 15, 2023, and Petitioner filed its joinder motion on July 14, 2023, before the joint motion to terminate in the 124 IPR was filed on November 20, 2023. The joinder motion is timely because joinder was requested no later than one month after institution of the 124 IPR. See 37 C.F.R. § 42.122(b). Additionally, the 124 IPR is still pending. The Petition therefore is not time-barred. Under these circumstances, we may grant Petitioner’s joinder motion.” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityNot reached
“This argument also is unavailing. We need not decide whether a party has identified all real parties in interest at the institution stage absent an implication of a time bar or an estoppel under 35 U.S.C. § 315. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18–20 (PTAB Oct. 6, 2020) (precedential). We recognize Patent Owner’s allegation that, “without joinder, the [P]etition is time-barred.” Prelim. Resp. 2 (emphasis added). As explained above, however, the Petition is not time-barred, given that Petitioner has timely filed its joinder motion and the 124 IPR is still pending. Patent Owner does not allege a time bar or other estoppel would prevent institution if an unnamed party were identified as a real party in interest.” slip op. at 5
Discretionary denialPatents in suitUS 9,578,045 - General Motors LLC v. Edward H. NortrupInstitutedPTAB · Nov 29, 2023 · IPR2023-00994 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–31 of the ’028 patent on 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
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing at least one of the challenged claims of the ’028 patent is unpatentable. We institute trial on all challenged claims and all asserted grounds of unpatentability. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”); 37 C.F.R. § 42.108(a) (“When instituting . . . 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.”). We have not, however, made a final determination with respect to the patentability of the challenged claims or the constructions of any claim terms.” slip op. at 35
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“discloses “lists of entities (Safety, Emergency, Work/Home, Navigation, etc.) and the authorizations of those entities to access ‘information in the mobile communication facility (e.g. location information),’” as Patent Owner argues, the specification “is not a substitute for, nor can it be used to rewrite, the chosen claim language.” See Prelim. Resp. 10 (emphasis added); SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (expressly rejecting “the contention that if a patent describes only a single embodiment, the claims of the patent must be construed as being limited to that embodiment”). We recognize that “understanding the claim language may be aided by the explanations contained in the written description,” but “it is important not to import into a claim limitations that are not a part of the claim.” SuperGuide, 358 F.3d at 875. Thus, “a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” Id. Here, the claim language recites nothing about entities set forth in the list of authorizations, let alone selectively enabling or disabling access to location data by entities set forth in the list of authorizations. See Ex. 1001, claim 1 (reciting “list of authorizations that permit a user to selectively enable or disable access to user cellphone location data”). In fact, the claim language says nothing about “who/what has ‘access’ enabled/disabled.” See Prelim. Resp. 8–9. As our reviewing court has explained, “it is the claims, not the written description, which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). Although Figure 54 of the ’028 patent discloses an embodiment where the user is presented with a list of entities whose access to location data may be enabled or disabled (e.g., turned on or off), nowhere does the written description limit the meaning of the “list of authorizations” phrase to that embodiment. See Ex. 1001, 45:34–39, Fig. 54. The written description does not even use that phrase. Our reviewing court has “cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)). Indeed, the ’028 patent states that “[w]hile [its] invention has been disclosed in connection with the embodiments shown and described in detail, various equivalents, modifications, and improvements will be apparent to one of ordinary skill in the art from the . . . description,” and that “[s]uch equivalents, modifications, and improvements are intended to be encompassed by the . . . claims.” Ex. 1001, 51:3–9.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“collection, and that the use of Feldman’s vehicle-carried cell phone was a known way to do that, is sufficient reason for combining Knockeart and Feldman. See Ex. 1004 ¶¶ 318–319 (describing the use of in-vehicle systems to collect traffic data); Ex. 1005 ¶¶ 7–8, 61 (describing the use of vehicle-carried cell phones to collect traffic data). Petitioner need only show that Feldman’s vehicle-carried cell phone would have been a “suitable option” for implementation in Knockeart’s navigation system. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). Patent Owner does not dispute that using Feldman’s vehicle-carried cell phone would have provided for traffic data collection in a system like Knockeart’s system. See generally Prelim. Resp.” slip op. at 26
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,444,028 - PTAB · Nov 28, 2023 · IPR2023-01011 · APJ Aaron W Moore · IPR · Institution
Review was instituted on claims 1–4, 7, 8, 10–13, and 16–19, and AO Kaspersky Lab was joined to IPR2023-00126 because joinder was appropriate.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“response, determines warrants the institution of an inter partes review under section 314. A motion for joinder should (1) set forth reasons why joinder is” slip op. at 4
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As noted, the Petition asserts the same unpatentability grounds upon which we instituted review in the ’00126 IPR, relying on the same evidence. See Motion 1. If joinder is granted, Petitioner agrees to assume an “understudy” role and states that “[u]nless and until the current petitioners in IPR2023-00126 cease to participate,” Petitioner “will not assume an active role.” See id. at 7–9. Petitioner also explains that “[n]o additional grounds or arguments are being introduced, no new evidence or issues are being added, and no additional discovery or briefing or oral argument should be necessary as a result of [Petitioner]’s joinder.” Id. at 9. Petitioner further “agrees to adhere to all applicable deadlines set forth in the [’00126 IPR] Scheduling Order.” Id. at 7. Because Patent Owner has not opposed the Motion, and because we agree with Petitioner that joinder with the ’00126 IPR is appropriate under these circumstances, we grant the Motion.” slip op. at 4
NonePatents in suitUS 10,257,224
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.