- PTAB · Aug 5, 2024 · PGR2024-00014 · APJ Barry L Grossman · PGR · Institution
Instituted PGR on claims 33–36 on all asserted grounds; the Board found it more likely than not that at least one claim would be unpatentable over Clary and Tsuji.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 324(a) (2018); 37 C.F.R. § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Section 324(a) provides that a post-grant review may not be instituted “unless . . . the information presented in the petition . . . , if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” Upon considering the evidence and arguments in the Petition (including its supporting testimonial evidence) and the evidence and arguments in the Preliminary Response (including its supporting testimonial evidence), we determine that the information presented shows that it is more likely than not that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute post-grant review on all challenged claims on all asserted grounds. See 37 C.F.R. § 42.208(a) (“When instituting post-grant review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); see also SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, or similar technical degree and at least 2 years of experience in the field of mechanical design or relevant product design experience.” Pet. 27 (citing Ex. 1003 ¶¶ 56–58). Petitioner also asserts that “[f]or individuals with different educational backgrounds, a person could still be of ordinary skill in the art provided that person’s additional experience compensates for any differences in that person’s education as stated above.” Id. At this stage of the proceeding, Patent Owner does not dispute Petitioner’s level of ordinary skill in the art, but “reserves the right to propose or challenge the level of ordinary skill and claim constructions should the Board institute trial.” Prelim. Resp. 21. Based on the record before us, we adopt, for purposes of this Decision, Petitioner’s proposed, and unopposed, level of ordinary skill. We also determine that this level of skill is consistent with the disclosed invention and the cited references.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Having considered the parties’ positions and evidence of record, we determine that no express construction of any claim term is necessary to determine whether to institute post-grant review. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent further discussion of the meaning of any claim term is necessary to our decision, we provide that discussion below in our analysis of the asserted grounds of unpatentability. Any claim discussion in this Decision does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that final claim construction, in general, is an issue to be addressed at trial. Claim construction will be determined at the close of all the evidence and after any hearing. The parties are expected to assert all their claim construction arguments and evidence in the Petition,” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“As to why a person of ordinary skill would have modified Clary based on Tsuji, Petitioner asserts “rotatably coupling the actuator assembly directly to a linkage arm instead of a bracket or other intervening part would have been a mere design choice from a finite number of options.” Pet. 98 (citing Ex. 1003 ¶ 142). Petitioner also asserts that “in a four-bar linkage system like Clary, there are only a few options for coupling the actuator.” Id. If one end of the actuator assembly is coupled to the support bracket, then the other end of the actuator assembly can be coupled to a linkage arm or the display bracket. Pet. 98 (citing Ex. 1003 ¶ 142). would have been motivated to directly rotatably couple the actuator assembly to an arm of the arm assembly because this could reduce the number of parts and provide direct force from the actuator to the arm assembly which causes the display bracket to move. This configuration would simplify the design by reducing part count resulting in reduced inventory, assembly and inspection costs. Such a modification could also allow for a shorter actuator. Pet. 99 (citing Ex. 1003 ¶ 142).” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham · NautilusPatents in suitUS 11,781,703 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture 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 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
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - PTAB · Jul 24, 2024 · IPR2024-00477 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–7 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“does not provide any authority supporting its position that failure to provide a Sotera stipulation “neutralizes” or “undercuts” the impact of a stay. We also disagree with Patent Owner’s suggestion that a district court stay can make discretionary denial inappropriate only when coupled with a Sotera stipulation. See Prelim. Resp. 59. Again, Patent Owner does not provide any authority supporting this position. Id. Contrary to Patent Owner’s positions, Fintiv indicates a district court stay “has strongly weighed against exercise of the authority to deny institution” independent of whether a Sotera stipulation—or any other type of stipulation—has been submitted. Fintiv at 6.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is 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). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any other claim language at this juncture 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 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,336,260 - PTAB · Jul 12, 2024 · IPR2024-00340 · APJ Matthew S Meyers · IPR · Institution
The Board instituted review of claims 1–24 on all asserted grounds, finding a reasonable likelihood of success based on Kane and Roman and declining § 325(d) denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Roman. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Roman, as Petitioner proposes.” slip op. at 34
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“of Petitioner. There is no evidence that Mosaic exercised any control over Petitioner’s decision to file the Petition (or over the arguments included therein), and there is no indication that Mosaic had any authority to do so. The record does not suggest that Mosaic provided any funding for this inter partes review. Nothing in the record suggests that Petitioner is acting as an agent or proxy of Mosaic to challenge the ’808 patent, or that the Petition was filed at Mosaic’s behest. Rather, the evidence indicates that Petitioner, through its own counsel, filed the Petition seeking to assert its own interests wholly independently of Mosaic. Moreover, we discern no basis for inferring that Petitioner had an opportunity to litigate the validity of the ’808 patent in the California Litigation. There is no evidence that Petitioner exercised any control over the defense of the California Litigation (or had any authority to do so), and there is no evidence that Petitioner had any involvement in—or even knowledge of—the California Litigation. On these points, Patent Owner does not argue otherwise.” slip op. at 7
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“until” a patent owner “produce[s] some evidence that tends to show that a particular third party should be named a real party in interest.” Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1243–44 (Fed. Cir. 2018). “A mere assertion that a third party is an unnamed real party in interest, without any support for that assertion, is insufficient to put the issue into dispute.” Id. Once the patent owner has sufficiently raised the issue, the “petitioner bears the burden of persuasion to demonstrate that its petitions are not time-barred under § 315(b) based on a complaint served on a real party in interest more than a year earlier.” Id. at 1242.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”13 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 38
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808 - Oracle Corporation v. Parking World Wide LLCAll claims unpatentablePTAB · Jul 11, 2024 · IPR2023-00385 · APJ Benjamin D M Wood · IPR · Final written decision
Claims 1–7 are unpatentable as obvious under §103 over Ivey, Matsumoto, and Tillotson, with Slemmer added for claims 4 and 7; Ward, Haynes, and Tillotson provide an alternative ground.
RulingsFinal written decision- Expert testimonyPetitioner expert creditedDecided for petitioner
“improved “efficiency” would have been a sufficient reason for one of ordinary skill in the art to combine Ivey, Matsumoto, and Tillotson, Patent Owner does not expressly dispute Dr. Paradiso’s testimony that the combination of Ivey and Matsumoto “would more efficiently streamline parking enforcement.” Pet. 48. Based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto in the proposed manner “to more efficiently streamline parking enforcement.” Id. Patent Owner also does not expressly dispute Dr. Paradiso’s testimony that incorporating Tillotson’s reservation and subscription systems into Ivey/Matsumoto would have simplified the payment process and saved motorists’ time. Based on Dr. Paradiso’s testimony, we find that one of ordinary skill in the art would have been motivated to combine Ivey and Matsumoto with Tillotson in the proposed manner to “make the parking management system more efficient and easier to use,” to simplify the process by which parking spaces are paid for, and to save motorists’ time. Id. Finally, Patent Owner does not dispute Petitioner’s contention that one of ordinary skill in the art would have had a reasonable expectation of success in combining the teachings of Ivey, Matsumoto, and Tillotson, or Dr. Paradiso’s testimony in support of that contention. Therefore, based on Dr. Paradiso’s undisputed testimony, we find that one of ordinary skill in the art would have had a reasonable expectation of success in combining these teachings.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner concurs with Petitioner’s definition. See PO Resp. 6 (“Patent Owner concurs with the Board in adopting Petitioner’s definition of a POSITA” for the Decision on Institution). As we did in our Decision on Institution, we adopt Petitioner’s unopposed definition of a person of ordinary skill. See Dec. 9. 8 Patent Owner has not presented any evidence of secondary considerations. 9 We find (and Patent Owner does not dispute) that Dr. Paradiso is qualified to offer expert testimony from the perspective of a skilled artisan. See, e.g., Ex. 1003 ¶¶ 7, 13.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“As the parties do not expressly dispute the construction of any particular term, we determine that no express construction of any term is necessary. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (approving Board decision not to construe claim language where the construction is not material to the dispute). Several of Patent Owner’s arguments, however, imply that the claims are limited in particular ways. For example, Patent Owner suggests” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“We disagree that the claims are limited to parking spaces along a street. First, neither independent claim includes any such limitation; instead, the claims are directed to methods “for representing the parking status of a plurality of parking spaces,” without indicating where the plurality of parking spaces are located. Ex. 1001, claims 1, 5. Second, the Specification teaches that the parking spaces that may be represented can be in a lot or garage, not only on a street. See, e.g., id., Abstr. (“A parking status system overlays upon images of a street, a lot, or a garage with representations of parking vehicles the status of any parking space shown in the image.”); id. at 5:4–7 (“The present invention overlays the parking status of vehicles upon a visual image of a street or lot as it matches the GPS coordinates of the parking control officer, the vehicle, and the street scene.”). Patent Owner also suggests that the claims are limited to images obtained from a camera that is part of the user’s portable electronic device. Patent Owner asserts, for example, that Haynes obtains video images from “a camera upon a pole” that is “in a fixed position at a fixed elevation,” whereas “the ’421 patent receives imagery from a mobile device camera held by an officer at his height,” which is “movable.” PO Resp. 24. Again, we disagree that the claims are so limited. The independent claims recite a method for “representing the parking status of a plurality of parking spaces to a screen of a user’s portable electronic device upon a real time camera view.” Ex. 1001, claims 1, 5. “Represent[ing] . . . to a screen” means that the real time camera view of the parking spaces is displayed on the portable electronic device, but does not require the real time camera view to be obtained from the portable electronic device.” slip op. at 11
Patent outcomesUS 10,438,421 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,438,421 - Sram, LLC v. Fox Factory, Inc.InstitutedPTAB · Jun 7, 2024 · IPR2024-00216 · APJ Frances L Ippolito · IPR · Institution
The Board instituted review of claims 1–9, 11–15, and 19 on all asserted grounds, finding a reasonable likelihood that Nakaya anticipates at least one claim.
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 thereto shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the arguments presented, we conclude that there is a reasonable likelihood that Petitioner would prevail in challenging at least one of claims 1–9, 11–15, and 19 of the ’223 patent as unpatentable under the grounds presented in the Petition. Pursuant to § 314, we grant institution of an inter partes review as to these claims of the ’223 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“This factor weighs somewhat in favor of discretionary denial. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15, 13 (PTAB May 13, 2020) (informative) (“Because the currently scheduled District Court trial is scheduled to begin two months before our deadline to reach a final decision, this factor weighs somewhat in favor of discretionary denial in this case.”).” slip op. at 52
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the preliminary record, Petitioner has the better position for institution. First, we note that we have not adopted Patent Owner’s claim construction as discussed above (see supra § III.C), and therefore do not agree that the term “bottom out cup” warrants the importation of limitations such as “a secondary piston,” “a secondary compression chamber,” or “secondary compression forces,” etc. Patent Owner’s reliance on the Specification and the district court testimony of Dr. Alexander Slocum to import these limitations is not persuasive. Id.” slip op. at 22
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“At this stage of the proceeding, we do not adopt Patent Owner’s construction because, on this record, it appears inconsistent with the plain language of claims 1, 11, and 19, and the disclosure of the ’223 patent.” slip op. at 10
Claim construction§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,550,223 - PTAB · Jun 5, 2024 · IPR2024-00053 · APJ Hyun J Jung · IPR · Institution
The Board instituted inter partes review of claims 10–14 on all presented obviousness grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Court Litigation” (“Director’s Memo”). The Director’s Memo states that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera. We agree with Petitioner that Fintiv does not apply to Google and, even if applied, the Fintiv factors weight against denial. Pet. 71–74. As for Samsung, it states that it “will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the [related] district court Case 2:22-cv-00462-JRG-RSP,” thereby making a stipulation similar to that provided in Sotera. Ex. 1047, 1 (citing Sotera). Accordingly, pursuant to the Director’s Memo, we decline to exercise” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“h) Petitioner Shows a Reasonable Likelihood of Prevailing Based on the record before us, Petitioner shows a reasonable likelihood of prevailing in its challenge to independent claim 10. Petitioner cites to portions of Mumick and Bengtsson that, on the present record, teach, suggest, or would have been understood to disclose the limitations of claim 10. Pet. 23–38. At this stage, Petitioner also presents sufficient reasons with support from the record that would have motivated one of ordinary skill in the art to make Petitioner’s proposed combination with a reasonable expectation of success. Id. at 21–23, 29, 35, 38–39.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and Internet-related communications technologies, or the equivalent, with additional education substituting for experience and vice versa. Pet. 7 (citing Ex. 1002 ¶¶ 28–30). in the art “[f]or purposes of th[e] Preliminary Response only.” Prelim. Resp. 4 (citing Pet. 7). “Patent Owner does not believe that minor deviations from this level of skill in the art would materially change the analysis.” Id. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Based on the preliminary record, we adopt the parties’ agreed-to interpretation of “memory storage means on said mobile device for storing a list of addresses of recipients.” Pet. 8–9; Prelim. Resp. 4–5; Ex. 1021, 47. Specifically, we adopt a means-plus-function interpretation wherein the function is “storing a list of addresses of recipients” and the corresponding structure includes: a floppy disk, a flexible disk, hard disk, magnetic tape, any other magnetic medium, a Compact Disc-Read Only Memory (CD- ROM), Digital Versatile Disc (DVD), any other optical medium, punch cards, paper tape, any other physical medium with patterns of holes, a Random Access Memory (RAM), a Programmable Read-Only Memory (PROM), an Erasable Programmable Read- Only Memory (EPROM), an Electrically Erasable Programmable Read-Only Memory (EEPROM), a flash memory, any other memory chip or cartridge, a carrier wave as described hereinafter, or any other medium from which a computer can read, “and equivalents.” Pet. 8–9; Prelim. Resp. 4–5; Ex. 1021, 47.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,107,978 - PTAB · May 29, 2024 · IPR2024-00063 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–19 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Prikowitsch or Sar-Shalom.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“16–23; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR” (Ex. 1055, 2), we do not discretionarily deny institution under Fintiv. As to Patent Owner’s allegation that Petitioner should not be able to file a stipulation after the Preliminary Response (Prelim. Resp. 22–23), we determine that Petitioner’s filing of its Sotera stipulation at the time it did is proper. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (PTAB Sept. 7, 2022) (precedential) (holding the Board may only consider stipulations offered before a decision on institution).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood in showing that the subject matter of claim 1 of the ’227 patent is unpatentable over Prikowitsch.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In summary, we determine that adoption of either party’s proposed construction does not provide a meaningful difference at this time; both appear to cover the same idea. Indeed, given that the claims already state that the call completion application detects an incomplete call, receives a call completion action, and triggers execution of the call completion action, we see no reason to construe “call completion application” to require anything beyond what is already in the claims. On this record, we see no support in the claims or specification to hold that a “call completion application” can be read as operating without reliance on a network in some way.2 Instead, after the call completion application becomes aware of an incomplete call, the application receives a choice from a user and triggers execution of that choice, and in accordance with the ’227 patent 2 To the extent Patent Owner’s proposed construction is seeking to preclude a network in the performance of the call completion application, then we would not agree with that construction. The call completion application is always dependent on the infrastructure of a communication network; as should be clear from our analysis above, the ’227 patent is focused on independence from the call completion services provided by the called party’s network. Notwithstanding the choice of call completion action being independent of the call completion services provided by the called party’s network, the call completion action still must rely on the network to provide the infrastructure to carry out certain actions. specification, it is that choice that is not premised on a limitation imposed by the called party’s network. Ex. 1001, 1:54–62 (“a system that complete[s] an incomplete call . . . independent of a preconfigured call completion service on the called party’s network”) (emphasis added), 2:39–43 (“the system . . . enables transmission of a voice message by a calling party to a called party when a network component or a called party device is not configured to offer a call completion option to the calling party to leave a voice message”). We do not explicitly provide a claim construction of any claim limitation in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claim. 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)). However, our analysis places the parties on notice of the potential scope of the claims.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and Internet-related communications technologies, or the equivalent, with additional education substituting for experience and vice versa. Pet. 7. Patent Owner agrees with Petitioner’s proposed level of skill at this time. Prelim. Resp. 4. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the level of disclosure provided in the ’227 patent and the prior art cited.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,185,227 - PTAB · May 15, 2024 · IPR2023-00268 · APJ Sean P O’Hanlon · IPR · Remand
The Board instituted IPR on claims 1–3, 5–10, 16–18, and 21–25 based on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsRemand decision- RehearingOther
“On August 11, 2023, a majority of the panel entered a Decision denying institution of inter partes review. Paper 9 (“Board Decision”). On September 11, 2023, Petitioner timely filed a request for Director Review of the Board Decision. Paper 10. On November 7, 2023, the Director delegated Director Review of the Board Decision to a Delegated Review Panel (“DRP”). Paper 11. On February 21, 2024, the DRP issued a decision granting Petitioner’s request for Director Review rehearing, vacating the Board Decision, and remanding to the original panel to reconsider whether to institute review. Paper 14 (“DRP Dec.”).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“[T]he Board’s cases addressing earlier trial dates as a basis for denial under NHK have sought to balance considerations such as system efficiency, fairness, and patent quality.” Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (PTAB Mar. 20, 2020) (designated precedential). Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. In evaluating the factors, we take a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review. Id. We are also guided by the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”),1 which provides several clarifications concerning the application of the Fintiv factors. One such clarification instructs that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Guidance Memo 3; see also id. at 7–8. Thus, we will not exercise our discretion to deny institution if a petitioner makes a stipulation similar to that provided in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (designated precedential in relevant part). 1 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. Petitioner stipulates “not to pursue, in the[Delaware litigation], any argument that the Challenged Claims are invalid on any ground that was raised or could have been reasonably raised in this [inter partes review], should th[e] petition be instituted.” Pet. 86; see also Ex. 1057, 1 (“If the Patent Trial and Appeal Board institutes a proceeding for [this inter partes review], [Petitioner] will not pursue in the [Delaware litigation], any argument that the challenged claims of the patent in [this inter partes review] are invalid on any ground that was raised or could have been reasonably raised in [this inter partes review] proceeding.”). Accordingly, pursuant to the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See 37 C.F.R. § 42.108(a). V. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 5–10, 16–18, and 21–25 of the ’779 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposed definition of the level of ordinary skill in the art. See generally Prelim. Resp. We note that Patent Owner’s declarant, Dr. Vancura, uses essentially the same definition as Petitioner. See Ex. 2001 ¶ 33. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,200,779 - PTAB · May 9, 2024 · IPR2024-00158 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu, and granted joinder.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“4. Conclusion for Claim 1 Having reviewed the Petition and Preliminary Response, we determine that Petitioner has a reasonable likelihood of success in showing that the subject matter of claim 1 would have been obvious in view of Pham and Wu. E. Conclusion on the Merits of the Petition We have found that the Petition warrants institution based on Petitioner’s showings for claim 1. We have reviewed Patent Owner’s arguments about the other grounds, but they largely rely on the earlier unpersuasive arguments for claim 1. On whole, we determine that Petitioner has shown that the Petition warrants institution.” slip op. at 18
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“FURTHER ORDERED that the Motion for Joinder with IPR2023- 00703 is granted, and Palo Alto Networks, Inc. and Fortinet, Inc. are joined as a party in IPR2023-00703;” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Opp. Mot. Join 4–12. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the copending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Reply Mot. Join 4–5), we do not discretionarily deny institution under Fintiv.” slip op. at 21
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“factor one necessarily outweighs the other General Plastic factors.”) (Director Review). Patent Owner focuses its analysis on factor 5 and proposed factor 8. Id. at 13–15. As to factor 5, which looks for an explanation of the time between petition filing, we determine that Petitioner sufficiently explained the time between Cisco’s petition and its own when it noted that it merely filed its petition and request for joinder when the statute permitted it. Reply Mot. Join 6 (citing 37 C.F.R. § 42.122(b)). In particular, the statute requires the earlier petition to be instituted before joining a party. 35 U.S.C. § 315(c) (requiring joinder to be to instituted proceedings). Thus, the time elapsed between filings is motivated by the statutory and regulatory procedures. See also 37 C.F.R. § 42.122(b) (requiring the joinder motion to be filed “no later than one month after the institution date of any inter partes review for which joinder is requested”). As to proposed factor 8, we agree with Petitioner that the present situation does not apply. Reply Mot. Join. 6–7; see also Shenzhen, IPR2018-00761, Paper 15, 18–19 (Saindon, concurring) (“There are legitimate reasons why a petition may be filed after [a decision on institution)].”). Proposed factor 8 analyzes situations where a second petitioner strategically waits to file its petition to see what happens to an earlier filed petition. Shenzhen, IPR2018-00898, Paper 9 at 7. If both of the petitioners were sued at or around the same time, but one waits until the other goes first, it can lead to an inference that the delay in filing a different petition was to gain an unfair advantage. Id. at 14 (looking with disfavor on a wait-and-see strategy to use the first petition as a “test case”). That is not the case here, where the second petition is a copycat petition. The Petition here cannot be said to have been filed second in order to glean knowledge from the first petition because it is the same petition. Thus, we do not see this Petition as being a strategic attempt to use Cisco’s petition as a “test case,” and do not consider factor 8 to weigh toward denial. Finally, reviewing factor 6, we do not find that granting Petitioner’s motion to join would cause an undue burden on the Board. Petitioner is serving as an “understudy” and thus, from our perspective, Petitioner’s presence does not change the existing Cisco IPR. Patent Owner argues that if Cisco were to settle then Petitioner would continue the proceeding. Opp. Mot. Join. 15. We do not see this as an undue burden in this situation. Petitioner’s Motion for Joinder serves to lessen our burden (as well as Patent Owner’s) compared to the scenario of it filing its own unique petition. We do not see the present case as similar to the Apple case, in which a copycat joinder petition was denied. See Apple, IPR2020-00854, Paper 9. That case, in our view, turned on the fact that the petitioner had already filed a petition that was denied on the merits. See id. at 4 (“In effect, it would be as if [the petitioner] had brought the second challenge to the patent in the first instance,” and labeling this a “serial attack.”). The situation here is not analogous to the Apple case because this is Petitioner’s only petition against the ’436 patent. The Petition is not a “serial attack” on the ’436 patent, it is merely Petitioner’s statutorily required vehicle to join as a party to an existing petition. Accordingly, we do not find factor 6 to weigh towards denial. Reviewing the General Plastic factors as a whole, including proposed factor 8, we find no factors to weigh toward denial and decline to exercise our discretion to deny institution.” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,566,612
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.