• Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution denied
  PTAB · Jun 20, 2023 · IPR2023-00152 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 7

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

    “Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 42). Patent Owner proposes claim constructions for “set of pixels,” “pixels that lie along a link/length of pathway between the starting point and the ending point,” and “in a loop.” Prelim. Resp. 17–28. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8

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

    “First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a nonlinear pathway. Second, Petitioner’s argument relies on AEM teaching that “AECS6 necessarily allows a user . . . to select any or all pixels of the layer to be nontransparent and thus included in the layer’s mesh to be moved and animated.” Pet. 21. We disagree, however, that AEM discloses selecting pixels to be nontransparent and including these pixels in a mesh to be moved and animated. That AECS6 arguably allows selected nontransparent pixels to be included in a mesh is not sufficient to establish that AEM discloses doing so. Petitioner contends that AECS6 and the screenshots of AECS6 created by Dr. Greenspun establish the background knowledge possessed by a person of ordinary skill in the art but does not explain adequately why AECS6’s alleged capability would cause one of ordinary skill in the art to understand AEM to teach selecting pixels of a layer to be nontransparent and including the selected pixels in the layer’s mesh. See Pet. 17 n.6 (quoting Qualcomm, 24 F.4th at 1376). Again, any pixels selected to be nontransparent being included in a mesh is mere happenstance.” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnesscites Graham
  Patents in suitUS 10,558,342
• Micron Technology, Inc. v. Katana Silicon Technologies LLCInstitution denied
  PTAB · Jun 14, 2023 · IPR2023-00105 · APJ Minn Chung · IPR · Institution

  The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable under the asserted obviousness grounds.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized 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 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’013 patent, the types of problems and solutions described in the ’013 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13

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

    “understand the claim term “a support pattern, provided on the second surface” recited in all challenged independent claims to mean a “support section that is part of a wiring pattern formed on the substrate’s second surface.” Pet. 14 (citing Ex. 1002 ¶¶ 119–121, 133–134). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “a support pattern, provided on the second surface.” See generally Prelim. Resp. For purposes of this Decision, we need not construe this term because the parties do not identify any material issue that would turn on the construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14

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

    “As discussed above in Section II.C, under the heading “SUMMARY OF THE INVENTION,” the ’013 patent states that “[t]he object of the present invention is to provide a wiring substrate, a semiconductor device, and a package stack semiconductor device, all with improved reliability of connection by suppressing occurrence of inadequate electrical connection.” Ex. 1001, 3:60–64 (emphases added). The ’013 patent further states that A wiring substrate of the present invention, in order to achieve the foregoing object, includes an insulating substrate, a terminal section for wire bonding or flip-chip connection and a support pattern, provided on a surface of the other side of the surface where the terminal section is provided, and on a position corresponding to the terminal section, for improving reliability of connection of wire bonding. Therefore, this structure can suppress deformation of the insulating substrate by the support pattern, even when the terminal section is pressed in wire bonding or other connection methods. As a result, reliability of connection in wire bonding or other connection methods, can be improved than conventionally. Id. at 3:65–4:11 (emphases added). In view of these disclosures in the Specification and the express recitation “for improving wire bonding connection” in the claim, we determine that the limitation reciting “support pattern . . . for improving wire bonding connection” requires the recited “support pattern” to be capable of “improving wire bonding connection.” See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007))); see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention.”).” slip op. at 43

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,731,013
• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstitution denied
  PTAB · Apr 12, 2023 · IPR2022-01561 · APJ Neil T Powell · IPR · Institution

  The Board denied institution on claims 1–14 because the petition did not show a reasonable likelihood of success on the asserted obviousness grounds, and institution would be inefficient.

  RulingsInstitution decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “In claim 1, “server” first appears in limitation 1b’s recitation of “a server.” Ex. 1001, 21:27–28. Every subsequent mention of “server” in claim 1 recites “the server.” Id. at 21:37, 21:40, 21:48, 21:51, 21:53, 21:60. Thus, grammatically, each time claim 1 recites “the server,” it refers back to the same “server” as in all previous recitations. Accordingly, claim 1’s plain meaning refers to the same server each and every time it recites “server.” See Salazar v. AT&T Mobility LLC, --- F.4th ---, 2023 WL 2778774 *3–4 (Fed. Cir. Apr. 5, 2023) (explaining claim language reciting element with definite article refers to same element previously recited) (citing Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342–43 (Fed. Cir. 2008); Harari v. Lee, 655 F.3d 1331, 1341 (Fed. Cir. 2011)). Neither party argues that any reason exists to construe claim 1’s recitations of “a server” and “the server” differently from their plain meanings. See generally Pet.; Prelim. Resp. We construe every one of claim 1’s recitations of “server” as referring to the same server (the “same-server requirement”).” slip op. at 14

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

    “Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23

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

    “Weighing the parties’ arguments and evidence, we find Petitioner has not demonstrated a reasonable likelihood of prevailing on its challenge of independent claim 1 as allegedly obvious over Fletchall and Xavier. As discussed above in Section II.B, we construe claim 1’s recitations of “the server” as all limited to the same server. Thus, as Petitioner contemplated, “the server” recited in limitation 1i is “limited to the same server as in antecedent [limitations 1e–1f].” Pet. 30. Petitioner inadequately supports its position that “Fletchall teaches that also.” Id. at 30–31. Petitioner’s and Dr. Shamos’s explanations do not persuasively support their position that Fletchall teaches product database (121) and payment server (130) are the same server.4 Pet. 30–31; Ex. 1002 ¶¶ 210–212. For example, the observation that product database (121) and payment server (130) are part of system (100) and can communicate with one another via computer network (120) does not make product database (121) and payment server (130) part of the same server. Pet. 30–31; Ex. 1002 ¶¶ 210–212; Prelim. Resp. 24. As Patent Owner 4 Also, to the extent Petitioner and Dr. Shamos have some other basis for contending that Fletchall teaches using the same server in performing the actions recited in limitations 1f and 1i, they do not support that view with sufficiently persuasive evidence or explanation. argues, following Petitioner’s reasoning would lead to the untenable conclusion that any two components of system (100) that can communicate with one another via computer network (120), including mobile device (104) and product database (121), would be part of the same server. Pet. 30–31; Prelim. Resp. 24–25. Accordingly, we find Petitioner’s and Dr. Shamos’s contentions unpersuasive. We also find unavailing Petitioner’s and Dr. Shamos’s observation that “Fletchall teaches that the product database 121 can be hosted on a merchant server . . . and be part of the common system 100 that includes payment server 130.” Pet. 31; Ex. 1002 ¶ 211. Hosting product database (121) on a merchant server does not make product database (121) and payment server (130) part of the same server. Nor does including product database (121) and payment server (130) within system (100).” slip op. at 23

  • Other 314aInstitution denied discretionary otherInstitution denied

    “functions (VTSAs) of the server 111, the server 130, and merchant server hosting the product database 121 into the same server.” Pet. 41. As explained above in Sections II.C.3.a–c, Petitioner fails to demonstrate a reasonable likelihood of establishing unpatentability of either of challenged independent claims 1 and 10 or any of challenged dependent claims 2–4, 6, 8, 9, and 11–14. Considering this, to the extent Petitioner’s arguments and evidence may demonstrate a reasonable likelihood of prevailing on its challenge of dependent claim 5 as allegedly obvious over Fletchall and Xavier, we do not find that instituting inter partes review would use the Board’s or the parties’ resources efficiently. See 35 U.S.C. 316(b).” slip op. at 27

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips
  Patents in suitUS 10,803,435
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Apr 11, 2023 · IPR2022-01477 · APJ Christopher M Kaiser · IPR · Institution

  The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–30 would be unpatentable, including a sufficient motivation to remove Brown’s stacking mechanism.

  RulingsInstitution decision

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

    “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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we deny the Petition and do not institute an inter partes review.” slip op. at 2

  • Skill levelSkill level petitioner adoptedOther

    “Id. Patent Owner states that the Preliminary Response “establishes that Petitioner’s arguments fail under its proffered definition of” a person of ordinary skill in the art. Prelim. Resp. 13. Patent Owner does not propose a different level of skill in the art at this stage of the proceeding. See id. (“Patent Owner reserves the right to dispute Petitioner’s definition of a [person of ordinary skill in the art] if an IPR is instituted.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner.” slip op. at 7

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

    “establishes that a POSITA would have been motivated to modify Brown in the manner proposed. Brown teaches that its battery casing with the stacking mechanism is used in both single and multi-cell batteries: A cell casing for a primary dry cell battery of the button type is disclosed which includes a case with a first elongated electrically conductive member affixed centrally to its exterior surface, and a cover with a second elongated electrically conductive hollow member affixed centrally to its interior surface in communication with an aperture. Both a single and a multi-cell battery are described which include the above battery casing. Ex. 1005, 1:11–18 (emphasis added). Consistent with this teaching, Brown’s Example I describes a cell casing “formed generally in accordance” with the casing depicted in Brown’s Figure that includes a stacking mechanism, in particular a screw (member 14) welded to the outside center of case 11. Id. at 2:58–81. In Example II, the “non-stacking variant” cited by Petitioner, Pet. 15, Brown teaches using the “cell casing of Example I,” which includes the stacking mechanism, in a single-cell battery. Ex. 1005, 3:1–18. Brown explicitly states that the aperture in the cover is sealed when the cell is used in a single cell battery, but provides for no other” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “In light of these disclosures in Brown, neither Petitioner nor Mr. Juzkow sufficiently explains why a POSITA would overlook Brown’s teaching that the casing includes the stacking mechanism regardless of the number of cells in the battery, in order to simplify the manufacturing process and produce a battery with a smooth cup surface that would reduce the space occupied by the battery when only a single cell is used. Pet. 15 (citing Ex. 1002 ¶ 54); see Ex. 1005, 1:11–18, 3:1–18. Notably, Mr. Juzkow’s testimony in this regard merely repeats the conclusory and unsupported assertions in the Petition, without citing to additional evidence or providing any reasoning to support his statement. Mr. Juzkow’s testimony thus adds little to Petitioner’s conclusory assertions regarding a POSITA’s motivation to modify Brown, and is entitled to little weight. Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential).” slip op. at 13

  § 103 obviousnesscites Phillips
  Patents in suitUS 11,024,907
• Eve Energy Co., Ltd. v. Varta Microbattery GmbHInstitution denied
  PTAB · Mar 14, 2023 · IPR2022-01484 · APJ Brian D Range · IPR · Institution

  The Board denied institution because Petitioner did not show that the asserted combinations taught or suggested the claimed force-fitting connection holding the housing cup and top together.

  RulingsInstitution decision

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

    “review. 35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a) (2020). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “top” that “are held together by a force-fitting connection.” Ex. 3001, 1:28– 29 (claim 1), 2:51–52 (claim 23). The parties disagree about whether the references on which Petitioner relies teach or suggest this limitation. Pet. 28–32, 64–66; Prelim. Resp. 53–61. As discussed more completely below, we are able to determine whether to institute trial without deciding precisely what the ’835 patent means when it describes two parts as “held together by a force-fitting connection.” Accordingly, we need not, and do not, construe this term expressly. See Nidec, 868 F.3d at 1017 (quoting Vivid Techs., 200 F.3d at 803). Although we need not decide the precise meaning of “held together by a force-fitting connection” in order to decide whether to institute trial, we note (1) that, without some evidence to the contrary, a battery casing whose half-parts are “held together by” a particular condition must be a battery casing whose half-parts would no longer be held together if the condition were not present, and (2) that neither party has directed us to any evidence to the contrary. Accordingly, whatever a “force-fitting connection” is, a battery made in accordance with the teachings of the prior art is not a battery that is “held together by a force-fitting connection” unless that battery would cease to be held together in the absence of the “force-fitting connection.”” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentable

    “Even if we accept Petitioner’s position that Kaun suggests radial forces around its seal, Petitioner has not presented sufficient evidence that such forces hold a housing cup and housing top together. With respect to the key “held together” recitation, Petitioner’s only argument or evidence in the Petition is a sole quote purportedly from Patent Owner’s expert, Dr. Peckerar:” slip op. at 19

  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 9,153,835
• Apple Inc. v. Shenzhen Rfcyber Asset Management, LLPInstitution denied
  PTAB · Jan 23, 2023 · IPR2022-01240 · APJ Patrick R Scanlon · IPR · Institution

  The Board denied institution on all challenged claims because Apple did not show a reasonable likelihood that Hayaashi and Prisma rendered the claims obvious.

  RulingsInstitution decision

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

    “We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2

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

    “sufficiently that the proposed combination of Hayaashi and Prisma would incorporate Prisma’s JCVM. See id. at 15–19. Instead, Petitioner asserts that one of ordinary skill in the art “would have simply needed to modify Hayaashi’s smart IC card chip 171 to incorporate Prisma’s core smart card elements, including CALC/OS and support for third-party e-purse applets.” Id. at 17 (citing Ex. 1003 ¶¶ 158–167). More specifically, Petitioner provides an annotated diagram, reproduced below, to identify the smart card components from Prisma to be incorporated into Hayaashi’s smart IC card chip 171. Id. at 18 (citing Ex. 1005, 9). In this annotated diagram, Petitioner adds red borders to the three boxes labeled “e-purse,” “CALC,” and “OS,”5 thereby 5 “CALC” is Prisma’s Card and Application LifeCycle manager, and “OS” is the card’s operating system. Ex. 1005, 6, 9. Hayaashi. As such, Petitioner does not specify Prisma’s JCVM as component that is incorporated into Hayaashi. To the extent Petitioner’s reference to “support for third-party e-purse applets” is meant to include Prisma’s JCVM, such a broad statement that fails to specifically mention Prisma’s JCVM lacks sufficient specificity to suggest that it would have been obvious to modify Hayaashi to include Prisma’s JCVM. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). For these reasons, we determine that the Petition fails to explain adequately why one of ordinary skill in the art would have been led to incorporate Prisma’s JCVM into Hayaashi.” slip op. at 12

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “purse applet and provides a response the e-purse applet is configured to expect” as claimed because the JCVM ensures that an applet operates as expected and that the applet’s requests are handled as the applet expects regardless of the underlying hardware platform. Ex. 1003 ¶ 178. This testimony, however, is entitled to little weight because Mr. Smith fails to provide the underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). The assertion that “the JCVM ensures that an applet operates as expected” is a conclusory statement not supported sufficiently by any objective evidence or analysis. Accordingly, we do not find Mr. Smith’s testimony of this point persuasive. Moreover, neither the Petition nor Mr. Smith explains sufficiently how Hayaashi or Prisma disclose providing an e-purse applet that the JCVM would interact with in the manner claimed. For the above reasons, we determine Petitioner has not met its burden” slip op. at 15

  § 103 obviousnesscites Graham
  Patents in suitUS 8,118,218
• Apple Inc. v. Rfcyber Corp.Institution denied
  PTAB · Jan 23, 2023 · IPR2022-01241 · APJ Kevin W Cherry · IPR · Institution

  The Board denied institution because the petition did not show a reasonable likelihood that any challenged claim was unpatentable over the asserted obviousness combinations.

  RulingsInstitution decision

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

    “We agree with Patent Owner that Petitioner has failed to show a reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation.” slip op. at 15

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Relying on the Declaration testimony of Mr. Smith, Petitioner contends that an ordinarily skilled artisan for the ’855 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 34–36). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 8. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’855 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 8

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

    “Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

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

    “reasonable likelihood that the combination accounts for limitation 1(f). As Patent Owner states, neither Prisma nor Hayaashi contain any express discussion of transaction logs, let alone “causing an emulator” to do so “after an authenticity of the commands is verified by the e-purse applet.” To fill this hole in the combination, Petitioner leans heavily on what it contends a person of ordinary skill “would have understood” about the modified system. See, e.g., Pet. 38. It is unclear whether Petitioner relying on inherency, some modification to the combination, or some combination with other knowledge of a person of ordinary skill to arrive at this limitation. But setting aside this problem for a moment, we find that Petitioner has failed to show sufficiently that what it contends is the emulator, the Java Card Virtual Machine, updates the logs, and more importantly, whether the logs are updated after the e-purse applet verifies the commands. Again, there is no express disclosure in Prisma of these components performing these actions. Instead, Petitioner relies on the testimony of Mr. Smith to show that the combination accounts for this limitation. See Pet. 37–38 (citing Ex. 1003 ¶¶ 208–215). But we find Mr. Smith’s testimony to be insufficient because it relies lacks adequate support for his assertions about what he contends a person of ordinary skill “would have understood” about how the hypothetical third-party e-purse application would have operated. See, e.g., Ex. 1003 ¶¶ 213–214. Mr. Smith’s contentions about what a person of ordinary skill are supported only with citations to vague passages in the Prisma reference that merely mention the use of Application for Secure Personal Identification and Communication (ASPIC) and public key infrastructure (PKI). See id. ¶ 213 (citing Ex. 1005, 21–22). Mr. Smith gestures to these passages, but then goes far beyond what those passages disclose without adequately tying his contentions to the actual disclosures and additional supporting evidence. See id. ¶¶ 213–214. Without more explanation and support, we find this evidence inadequate to show that the combination would actually suggest this limitation. The lack of clarity of what theory the Petition is relying for this limitation exacerbates this problem. Because the references are completely silent as to “transaction logs,” let alone when, how, or by what they are updated, it is important for Petitioner to explain how it is filling that gap. Instead, Petitioner and Mr. Smith venture far beyond the disclosure of the actual references to what they contend a person of ordinary skill “would have known.” See Pet. 36–38; Ex. 1003 ¶¶ 208–215. At some points, Petitioner appears to attempt to rely on the underlying Prisma Proton system, not just the Prisma reference relied on in this ground. See Pet. 38 (discussing what was known about the Prisma Proton system). But 35 U.S.C. § 311(b) limits inter partes review as allowed “only on the basis of prior art consisting of patent or printed publications.” We decline to use the actual system to fill in gaps in the printed publication. Focusing our attention on the Prisma reference itself, we are only left with Mr. Smith’s conjectures about what a person of ordinary skill “would have known” without sufficient reasoning of how a person of ordinary skill would have combined this knowledge with the reference in precisely this way to arrive at the claim limitation. A rejection based on obviousness requires articulated reasoning with rational underpinning. See KSR, 550 U.S. at 418. In this case, having carefully reviewed the evidence currently presented, we cannot say that Petitioner has presented sufficient articulated reasoning to establish a reasonable likelihood of prevailing in showing that this limitation would have been obvious in view of the combination presented. Because all of the grounds and challenged claims contain a similar limitation to limitation 1(f) and rely on similar reasoning, we determine that Petitioner has also failed to establish a reasonable likelihood of prevailing on those grounds as well.” slip op. at 15

  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 8,448,855
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01385 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution because Flowco did not show a reasonable likelihood of proving claims 3–17 obvious over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted).” slip op. at 8

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

    “We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9

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

    “may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 22–24; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,395,865
• Flowco Production Solutions, LLC v. Well Master CorporationInstitution denied
  PTAB · Jan 20, 2023 · IPR2022-01384 · APJ Eric C Jeschke · IPR · Institution

  The Board denied institution on claims 1–16 because the Petition did not show a reasonable likelihood of proving obviousness over Victor and Yerian, with or without Davis.

  RulingsInstitution decision

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

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). Inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314. Upon consideration of the evidence and arguments in the record, for the reasons below, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We thus deny institution of inter partes review. See 37 C.F.R. § 42.108(b) (“At any time prior to a decision on institution of inter partes review, the Board may deny all grounds for unpatentability for all of the challenged claims. Denial of all grounds is a Board decision not to institute inter partes review.”).” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art at the time of the alleged invention “would have [had] at least a bachelor’s degree in physics or an appropriate engineering discipline, as well as at least three years of experience in designing well plungers.” Pet. 7. Patent Owner “does not dispute” Petitioner’s proposed definition of the level of ordinary skill in the art, which appears consistent with the current record, including the prior art. See Prelim. Resp. 11; GPAC Inc., 57 F.3d at 1579. For purposes of this Decision, we adopt the definition of the level of ordinary skill in the art proposed by Petitioner.” slip op. at 8

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

    “Petitioner “proposes that all claim terms be given their ordinary and customary meanings and that no explicit constructions are necessary.” Pet. 8. Patent Owner does not dispute that position. See Prelim. Resp. 11. We need not construe explicitly any claim terms because doing so would not change the outcome of the analysis below. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8

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

    “As noted by Patent Owner, however, the mere fact that two references may address the same or similar problems is not adequate to demonstrate motivation to combine, even at this stage of the proceeding. See PO Resp. 21–23; see also Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (concluding that prior art padlocks were analogous art because they “were clearly directed toward the same problem the inventor was trying to solve in the” patent at issue); Johns Manville Corp. v. Knauf Insulation, Inc., IPR2018-00827, Paper 9 at 10–11 (PTAB Oct. 16, 2018) (Decision Denying Institution) (informative) (“Demonstrating that a reference is analogous art or relevant to the field of endeavor of the challenged patent is not sufficient to establish that one of ordinary skill would have had reason to combine its teachings with other prior art in the manner set forth in the claim.”). Even so, Patent Owner provides persuasive argument and evidence through its expert, Mr. Cosby, that Victor and Yerian address very different problems and solve these problems in very different ways. See Prelim. Resp. 23–27 (citing Ex. 2002 ¶¶ 56–100). Petitioner’s conclusory attorney arguments do not address these differences and how they would impact the motivation to combine the teachings of Victor and Yerian, despite these differences.” slip op. at 16

  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,793,728
• Beckman Coulter, Inc. v. Sirigen II LimitedInstitution denied
  PTAB · Jan 6, 2023 · IPR2022-01208 · APJ Jon B Tornquist · IPR · Institution

  The Board denied institution on all challenged claims and grounds because Petitioner did not show a reasonable likelihood of prevailing on any challenged claim.

  RulingsInstitution decision

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

    “Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner does not establish a reasonable likelihood that it would prevail with respect to at least one claim of the ’303 patent. Thus, we do not institute an inter partes review.” slip op. at 2

  • PTAB / AIA Trials › Discretionary denialNot reached

    “1 Because we deny the Petition on the merits, we do not address the parties’ arguments related to discretionary denial.” slip op. at 2

  • Skill levelOther

    “Petitioner asserts that a person having ordinary skill in the art (POSITA) “would have at least a Ph.D. degree in chemistry, or a bachelor’s or master’s degree plus experience involving the use and design of fluorescent probes or dyes.” Pet. 17 (citing Ex. 1007 ¶¶ 14–18). Patent Owner agrees that a POSITA may have a Ph.D. degree or master’s degree in chemistry, but asserts that a POSITA would also have “some experience with fluorescence” in addition to a Ph.D. degree in chemistry and that the experience of a POSITA with a master’s degree in chemistry is alternatively “industry experience in the field of biological detection systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 7). For purposes of this Decision, we need not choose between the parties’ proposed levels of one of ordinary skill in the art, which are quite similar, as neither party asserts that the anticipation or obviousness analyses in this case would turn on which definition is adopted. See, e.g., id. at 10 (noting that the arguments and conclusions reached in the Preliminary Response “would not change” if Petitioner’s definition of the ordinarily skilled artisan were applied).” slip op. at 9

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

    “structure of Formula (Ia),” including specific MU, L1 and L2, G1 and G2, n, and a, b, c, and d (which define the mol % of each unit within the structure) constituents, wherein each R group must be a “[n]on-ionic side group capable of imparting solubility in water in excess of 10 mg/mL.” Ex. 1006, 239:29–240:56. The ’303 patent expressly defines the phrase “[n]on-ionic side groups capable of imparting solubility in water” to refer to “side groups which are not charged and allow the resulting polymer to be soluble in water or aqueous solutions with no visible particulates.” Id. at 54:31–34. In view of structure of claim 1 and the express definition provided in the ’303 patent, we agree with Patent Owner that claim 1 requires that the non-ionic side group R must be capable of imparting solubility to the claimed conjugated polymer (having constituents that satisfy the claimed variables noted above) in excess of 10 mg/mL. Prelim. Resp. 13. On this record, it is not sufficient to show that a particular R group is capable of” slip op. at 11

  Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 8,575,303

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.