- PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00531 · APJ Scott Raevsky · IPR · Final written decision
Claims 1, 3–9, and 20 are unpatentable as anticipated by Flore under § 102.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Petitioner bears the burden to demonstrate unpatentability, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation inquiry takes into account the literal teachings of the prior art reference and inferences the ordinarily skilled person would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner defines the person of ordinary skill in the art as follows: “As of 2008, a person of ordinary skill in the art [POSA or POSITA] . . . of the ’988 patent’s field would have had a bachelor’s degree in electrical engineering, computer engineering or an equivalent, as well as two years of industry experience related to telecommunications networks.” Pet. 3 (citing Ex. 1003 ¶ 56). Petitioner also asserts that “[a]dditional graduate education . . . could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner “applies this definition of a POSITA for its analysis.” PO Resp. 18. Based on the complete record now before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and the ’988 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner also does not persuasively explain why we should disregard the ’988 patent’s exception to peer-to-peer connections, that is, “in not all cases will the DMA servers 406 be able to participate as peers in an IP network.” Id. at 9:12–13. Patent Owner’s assertions that when “DMA servers are able to connect as peers with an existing DMA network, they do so,” and that the “new DMA server is just the initial node in a new peer-to-peer network,” do not find support in the specification. See PO Resp. 23–24 (citing Ex. 1001, 9:9–24, Fig. 6). Instead, Patent Owner cites a portion of the specification that explains “in not all cases will the DMA servers 406 be able to participate as peers,” such as in rural areas, in which case “DMA gateways . . . enable DMA servers to communicate with one another when one or more of the DMA serves cannot participate directly in the IP network.” Ex. 1001, 9:12–21. Nothing in this passage suggests that a DMA server not acting as a peer would merely be a temporary condition and that once able to connect as a peer, it would do so. Such reasoning is gloss added by Patent Owner and Patent Owner’s expert, Dr. Cooklev, whose testimony on this point mirrors the Response. Ex. 2021 ¶ 69. We do not find Dr. Cooklev’s testimony credible on this point because the testimony does not align with the ’988 patent specification.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Our reviewing court “has repeatedly 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). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). There is no disclaimer or lexicography in the specification that requires us to limit the claims as Patent Owner wishes. We agree with Petitioner that the passages upon which Patent Owner relies use non-limiting, exemplary language. See Reply 6. For example, Patent Owner relies heavily on Figure 4 and its accompanying description, but Figure 4 “illustrates a non-limiting, exemplary embodiment.” PO Resp. 19–25; Ex. 1001, 6:31. Thus, Figure 4’s references to a “peer-to-peer connection,” “switch and route call[]” functionality, that “controlling logic can be distributed,” and “self-healing and redundant” wireless coverage, for example, do not limit the claim. See Ex. 1001, 6:48, 52, 64, 66 (emphasis added).” slip op. at 11
Patent outcomesUS 7,855,988 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,855,988 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16
- Prior constructionPrior construction adoptedDecided for petitioner
“For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 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” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,880,715 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentablePTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision
Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other 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)). We discuss the meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29
Patent outcomesUS 7,653,414 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00568 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 11, or 17 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 22
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 13 (quoting Ex. 2002, 9).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,081 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Remand
On remand, the Board held claims 10 and 27 unpatentable as obvious over Robinson, Greim, and Adams because skilled artisans would have optimized heater length through routine experimentation.
RulingsRemand decision- RemandOther
“Standard Operating Procedure 3 communicating the parties’ positions on submitting additional briefing on remand. Ex. 3001.2 We responded on April 15, 2024, authorizing the parties to file additional briefs limited to the question of “whether the Federal Circuit’s determinations on written description are applicable to an obviousness analysis, and if so, how they should be applied.” Ex. 3001. Petitioner filed its Supplemental Brief on Remand on April 29, 2024 (Paper 41, “Pet. Supp. Br.”), and Patent Owner filed its Supplemental Reply Brief on Remand on May 13, 2024 (Paper 42, “PO Supp. Reply”). B. The Issue on Remand As part of our Final Written Decision, we determined that Petitioner established, by a preponderance of the evidence, that claims 10 and 27 lack adequate written description support. FWD 38–41. In view of this, we declined to address Petitioner’s arguments that claims 10 and 27 are unpatentable as obvious in view of Robinson,3 Greim,4 and Adams.5” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a [person of ordinary skill in the art] would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Although Patent Owner is correct that Petitioner does not direct us to any disclosure of a heating member having a length that “falls within the claimed range,” such a disclosure in the art is not required for a showing of obviousness. See, e.g., In re Huang, 100 F.3d 135, 136 (Fed. Cir. 1996). In Huang, the claim required a racquet grip comprising a textile layer and a polyurethane layer, and that the ratio of their thicknesses be “larger than approximately 0.18.” Id. at 137. The prior art disclosed a textile layer and polyurethane layer in thickness ratios ranging from 0.111–0.142. Id. at 136. Although the prior art did not disclose a ratio in the claimed range, the Federal Circuit affirmed the Board’s obviousness rejection because the evidence showed that “one of ordinary skill in the art would have experimented with various thicknesses to obtain an optimum range.” Id. at 139; see In re Aller, 220 F.2d 454 (CCPA 1955) (affirming an obviousness rejection of a claim to a chemical process reciting use of 25– 70% sulfuric acid at 40–80 degrees when the prior art disclosed the same reaction with 10% sulfuric acid at 100 degrees); In re Hill, 284 F.2d 955 (CCPA 1960) (affirming an obviousness rejection of a claim to a chemical process conducted at 150–250 degrees when the prior art disclosed the same reaction at 300 degrees). The Federal Circuit also noted that “Huang does not contend that he has achieved unexpected results by increasing the thickness of the polyurethane layer.” Huang, 100 F.3d at 139–140. Those principles apply with equal force to the facts in this case. Here, the evidence of record demonstrates that heaters having a length that spans some percentage of the length of the disposable aerosol forming substance were known in the art. For example, Robinson discloses one embodiment wherein heating element 72 has an elongated portion that extends into tobacco segment 89. Ex. 1006, 27:35–39, Fig. 3. Greim likewise discloses a heating element having some length, which may be inserted into a plug of an aerosol-forming substrate. Ex. 1007, 13, Fig. 4. Adams discloses similar information. Ex. 1008 ¶ 45 (“The axial length of the projection 72 is selected so that it does not extend all the way through the tobacco plug.”), Fig. 7. Following the reasoning in Huang, these disclosures of a heater having some length, albeit not necessarily a length in the claimed range, are sufficient to demonstrate obviousness if there is evidence demonstrating “one of ordinary skill in the art would have experimented with various [lengths] to obtain an optimum range” and there is no evidence that the claimed range provides unexpected results. Huang, 100 F.3d at 139.” slip op. at 22
Patent outcomesUS 10,492,542 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,492,542 - PTAB · Jul 9, 2024 · IPR2024-00120 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 11, and 26–34 on all asserted grounds, finding a reasonable likelihood of prevailing on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“2 While the ’230 patent is currently involved in a parallel district-court case, Petitioner argues that “[i]nstitution is appropriate under Fintiv . . . .” Pet. 157. Petitioner also states that “if this proceeding is instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Id. Patent Owner does not challenge Petitioner’s argument. Accordingly, and in view of Petitioner’s stipulation, it is not necessary to reach Petitioner’s discretionary denial arguments. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to section II.A)).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree (B.S.) in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 7 (citing Ex. 1004 ¶¶ 5–17, 79–84). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’230 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, 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. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,191,230 - PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), 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 1 of the claims challenged in the petition.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We interpret the challenged claims 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), including construing 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. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. 8 The present record does not include any objective evidence of nonobviousness. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315
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.