- PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on 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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - PTAB · Sep 5, 2024 · IPR2024-00441 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems,” and “[a]dditional education may substitute for professional experience and significant work experience may substitute for formal education.” Pet. 30 (citing Ex. 1002 ¶¶ 40–42). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, we adopt Petitioner’s definition for the purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“persuaded on the current record that Patent Owner provides sufficient evidence to establish the failure of others. Patent Owner makes much of Broadcom and CableLabs allegedly failing to “realize the possibility of remote spectrum monitoring” prior to the ’008 patent. See Prelim. Resp. 50–52. The mere failure to “realize the possibility” of a certain technique or device, however, is not sufficient to show the failure of others. Rather, the failure of others as an indicium of nonobviousness generally 8 DOCSIS refers to “Data Over Cable System Interface Specification.” Ex. 1011, 1:42–43. relates to situations where others failed while attempting to address a particular problem. See In re Cyclobenzaprine Hydrochloride Extended- Release Capsule Pat. Litig., 676 F.3d 1063, 1081 (Fed. Cir. 2012) (“Evidence that others tried but failed to develop a claimed invention may carry significant weight in an obviousness inquiry. . . . [E]vidence of failed attempts by others could be determinative on the issue of obviousness.” (emphases added)); see also Volvo Penta of the Americas, LLC v. Brunswick Corp., 81 F.4th 1202, 1213 (Fed. Cir. 2023) (“Indeed, we have found that ‘[o]bjective considerations such as failure by others to solve the problem . . . may often be the most probative and cogent evidence of nonobviousness.’” (emphasis added)). In this case, Patent Owner does not show sufficiently that any alleged failure experienced by Broadcom or CableLabs (or any other party) occurred attempting to address a pertinent problem.” slip op. at 15
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,792,008 - PTAB · Aug 20, 2024 · IPR2024-00442 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–18 and all petition grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious under § 103.
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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’826 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (a “POSITA”) at the time of the alleged invention would have had a degree in electrical engineering or a similar discipline, and three-to-four years of experience working with television signal processing and communication systems. Additional education may substitute for professional experience and significant work experience may substitute for formal education. Pet. 24 (citing Ex. 1002 ¶¶ 44–46). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningDecided for petitioner
“As there is no controversy between the parties regarding any claim language that we would need to resolve in order to render our decision in this case, we apply the ordinary and customary meaning of the claim terms without specific construction. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy).” slip op. at 11
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“The word “means” does not appear in the claims of the ’826 patent. When this is the case, there is a presumption that the claims do not recite means-plus-function limitations under § 112 ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Since neither party offers any argument or evidence to contravene this presumption, we do not construe any claim term as means-plus-function in rendering our decision.” slip op. at 12
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 9,825,826 - PTAB · Jul 26, 2024 · IPR2024-00393 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1 and 3 on all asserted grounds, finding a reasonable likelihood that the Amit, Jacobsen, and Isaksson combination renders them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA [(person of ordinary skill in the art)] would have a degree in electrical engineering, computer engineering, or a related field and experience working in signal processing and/or communication systems/networks, e.g., a bachelor’s and three or more years of experience; a master’s and at least one year of experience; or a doctorate and some work experience. Additional education could substitute for professional experience, or vice versa..” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims are “obvious under any reasonable interpretation,” so “no express constructions are required.” Pet. 3. Patent Owner does not offer construction of any claim term, so there is no dispute over claim construction that we need to resolve. We apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“and Jacobsen. Prelim. Rep. 36–41. Specifically, Patent Owner argues that Amit already identified and solved the reflection problem so there would be no need to make an additional modification to Amit. Id. at 36–37 (citing Ex. 1014, 19:65–20:43). This argument does not negate, however, Petitioner’s contention that a POSITA would have recognized that Jacobsen’s multicarrier modulation would improve upon Amit’s single-carrier modulation by mitigating distortion on the cable network, adapting to channel degradation, and providing increased computational efficiency. Pet. 49–50 (citing Ex. 1016, 312; Ex. 1004 ¶ 173); see KSR, 550 U.S. at 422 (motivation to combine established when POSITA would have appreciated the benefits achieved by the combination).” slip op. at 17
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 7,295,518 - PTAB · Jul 26, 2024 · IPR2024-00373 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–17 on all asserted grounds, finding a reasonable likelihood of unpatentability under § 103.
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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’249 patent on all challenges in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“deny institution under § 314(a) based on the factors set forth in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 at 15–19 (§ II.B.4.i) (PTAB Sept. 6, 2017) (precedential) (“General Plastic”). Pet. 88–89; Prelim. Resp. 59–60. General Plastic addresses “[m]ultiple, staggered petitions challenging the same patent and same claims rais[ing] the potential for abuse.” General Plastic, Paper 19 at 17 (emphasis added). The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating discretionary denial under § 325(d), the Board follows a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). The Advanced Bionics framework is further informed by the factors set forth in Becton, Dickinson” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A POSITA would have had a Bachelor’s degree in electrical engineering, computer engineering, or a related field, and 2–3 years of experience in design or development of signal processing and communication systems or networks. . . . Additional education could substitute for professional experience, or vice-versa. Pet. 6 (citing Ex. 1002 ¶¶ 17–18). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,594,249 - 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 · Jun 18, 2024 · IPR2024-00221 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on all challenged claims, 1–7, 15–23, and 25–30, on all asserted §103 obviousness grounds.
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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’720 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had at least a bachelor’s degree in computer science, electrical engineering, or a related subject, and at least two years of experience working with databases, computer networks, and related web technologies. A more advanced degree can substitute for less work experience and vice versa. Pet. 17 (citing Ex. 1003 ¶¶ 57–61). Petitioner’s proposed level of skill in the art is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims’ terms “can be afforded their plain and ordinary meaning.” Pet. 17. As there is no dispute of any claim term at this time, we do not expressly construe any claim term, and will apply the ordinary and customary meaning consistent with 37 C.F.R. § 42.100(b).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Specifically, Petitioner contends that “Cochran endeavors to ‘provide an efficient and user-friendly method of searching computer databases’ using ‘a search system that efficiently displays information to users.’” Pet. 55 (citing Ex. 1005, 4:4–19). Petitioner asserts that Cochran acknowledges that “it may need to display more items than a pick box can display simultaneously, forcing a user to scroll through options.” Id. (citing Ex. 1006, 10:58–65). Petitioner argues that a “POSITA would have appreciated that certain lists in Cochran are extremely voluminous and would benefit from improved navigation methods.” Id. at 55–56 (citing Ex. 1006, Fig. 4e; Ex. 1003 ¶¶ 482–485). Petitioner contends that “Zellweger sought to remedy th[e] same problem.” Id. at 56. According to Petitioner, a “POSITA would have recognized that it is difficult for users to scroll through Cochran’s long pick box lists” and “would have looked to Zellweger to improve the usability of the pick boxes” by using Zellweger’s Alphabet or Content Lists instead of Cochran’s scroll bars when the number of entries exceeds what can be presented on a screen. Id. at 56–57 (citing Ex. 1003 ¶ 485). Petitioner contends that the combination is “nothing more than using one known method (Zellweger) to improve another known method (Cochran) according to the express teachings of Zellweger to yield predictable results.” Id. at 57. Petitioner further alleges that other methods for implementing pick boxes for use with “wide ranges” of terms were known in the art. Id. (citing Ex. 1006, 10:61–65). Petitioner contends that Cochran and Zellweger are analogous art because they are “directed to the same field (accessing information in databases), and address similar concepts (making information more easily accessible using graphical interfaces)” and teach several of the same concepts (e.g., GUIs to access databases) and are both implemented as computer software.” Id. (citing Ex. 1006, code (57), 1:14–20, 4:2–57; Ex. 1007, code (57), 1:35–40, 2:30–43; Ex. 1003 ¶¶ 480–481). Petitioner contends that a “POSITA would have appreciated that Cochran’s and Zellweger’s teachings were well-known and complementary to one another.” Id. Petitioner alleges that a “POSITA would have had a high expectation” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,760,720 - Keysight Technologies, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Jun 3, 2024 · IPR2023-00448 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable under § 103; claims 6, 14, 22, 30, and 33 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In the Institution Decision, we instituted review based on all challenged claims and all challenges included in the Petition. Paper 7 (“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable but has not shown by a preponderance of the evidence that claims 6, 14, 22, 30, and 33 are unpatentable. See 35 U.S.C. § 316(e) (2018).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, the combined disclosures in Law and” slip op. at 86
Patent outcomesUS 11,012,474 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,012,474 - PTAB · May 31, 2024 · IPR2024-00255 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–4 and 6–11 on both asserted 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
“that, because judgments have been entered in the district court actions, there is finality as that relates to Fintiv issues. In a similar instance, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.9” slip op. at 12
- 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art. Pet. 7 n.2 (citing Ex. 1003 ¶¶ 8, 10, 26). Dr. Sundaresan testifies that a person having ordinary skill in the art “had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with . . . navigation and/or geolocation systems,” and “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. For the purposes of its Preliminary Response, Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. Prelim. Resp. 32. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’104 patent and the prior art. See” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“For purposes of this Decision, we adopt the district court’s construction of “grid point” as “a point associated with representative calibration data for an area.” See Ex. 1054, 18–20. This construction is consistent with the claim language and the specification of the ’104 patent and is further supported by the reasoning provided by the district court’s claim construction order. See id. 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104
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.