- PTAB · Jun 24, 2024 · IPR2024-00699 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–18 based on the § 103(a) grounds instituted in the LG IPR and granted VIZIO’s motion to join that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–18 of the ’805 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“because this proceeding and the LG IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Mot. for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 7–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–7), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 10,419,805 - PTAB · Jun 24, 2024 · IPR2024-00696 · APJ St John Courtenay III · IPR · Institution
The Board instituted review of claims 1–14 on the existing § 103(a) grounds and granted VIZIO’s motion to join the LG IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–14 of the ’174 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“14, 2024 (Paper 4 (“Notice of Filing Date Accorded to Petition and Time for Filing Patent Owner Preliminary Response), 1), and the Motion for Joinder was filed on the same day. As such, VIZIO’s Motion for Joinder was timely, because joinder was requested no later than one month after May 21, 2024, the institution date of the LG IPR. See LG IPR Dec. on Inst.” slip op. at 5
NonePatents in suitUS 9,247,174 - PTAB · Jun 24, 2024 · IPR2024-00694 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–6, 11–16, 21, and 22 based on the same § 103(a) grounds as the LG IPR, and joined VIZIO to that proceeding.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an IPR may not be instituted unless the information presented in the Petition shows “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 we discuss below, we institute an IPR as to claims 1–6, 11–16, 21, and 22 of the ’040 patent, and we grant VIZIO’s Motion for Joinder.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In its Motion for Joinder, VIZIO contends that joinder is appropriate because this proceeding and the LG IPR are substantively identical (i.e., they involve the same claims, the same patent, the same prior art references, the same expert declaration, and the same arguments and evidence). See Mot. for Joinder 4–6. Stated differently, VIZIO asserts that the Petition and supporting evidence filed in this proceeding do not raise any new substantive or procedural issues. See id. VIZIO further argues that, because it is willing to work with counsel for LG (i.e., as an understudy) to consolidate all filings and discovery, joinder will not impact the schedule of the LG IPR, thereby allowing us to complete a single consolidated proceeding in a timely manner. Id. at 6–9. VIZIO also argues that, if it is joined as a party with the LG IPR, Multimedia will not suffer any prejudice because granting joinder under these circumstances will not add new issues for consideration by or costs to Multimedia above and beyond those already presented in the LG IPR, nor will granting joinder affect the issues, briefing, or discovery in the LG IPR, as they will remain the same. Id. at 9–10. Given that Multimedia did not oppose VIZIO’s Motion for Joinder (Ex. 3002), and VIZIO agrees to consolidate all filings and discovery with LG (Mot. for Joinder 6–9), VIZIO has demonstrated that joinder will not unduly complicate or delay the LG IPR. See 37 C.F.R. § 42.1(b) (providing for “the just, speedy, and inexpensive resolution of every proceeding” (emphases added)). We, therefore, grant VIZIO’s Motion for Joinder and, as a result, join VIZIO as a party with the LG IPR.” slip op. at 5
NonePatents in suitUS 9,510,040 - PTAB · Jun 11, 2024 · IPR2024-00353 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–4, 6, 8–10, 12–17, and 19 based on the reasonable likelihood that the Kim, Bae, and WD-Manual combinations, with Coburn for certain claims, render them obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Director Memo. Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because LG filed a Sotera stipulation in both this proceeding and the district court case where LG is a party. Pet. 131; Ex. 1025.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“For purposes of institution, there is sufficient evidence in the record that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Lippman, LG argues the following: [a] person of ordinary skill in the art . . . in the field of the ’254 patent, as of its earliest possible filing date of August 17, 2012, would have been someone knowledgeable and familiar with the television display technology that is pertinent to the ’254 patent. A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of professional experience can be remedied by additional education, and vice versa. Pet. 10–11 (citing Ex. 1003 ¶ 19). For the limited purposes of its Preliminary Response, “[Multimedia] adopts [LG’s] definition of a person of ordinary skill in the art.” Prelim. Resp. 27 (citing Pet. 10–11). To the extent necessary, we adopt LG’s assessment of the level of skill in the art because it is consistent with the ’254 patent and the asserted prior art.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In any event, the “mere disclosure of alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the claimed invention. Fulton, 391 F.3d at 1201. When combining references to establish obviousness, the appropriate consideration is whether the proposed combination would work for its intended purpose, not whether the proposed combination is inconsistent with the stated goal of one of the references, as Multimedia argues. See Prelim. Resp. 30; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417 (citation omitted). To the extent Multimedia argues that LG’s reasons to combine the relevant teachings of Kim with those of Bae and WD-Manual are deficient, we determine, on the preliminary record, that LG has made a sufficient showing regarding the proposed combination. See Prelim. Resp. 31 n.4. At this stage in the proceeding, Multimedia merely offers attorney argument that Kim’s remote controller 200, which may include “other appropriate user input device[s],” is a generic statement that an improvement is possible, but it does not suffice to incorporate the specific features of Bae or WD-Manual. Id. (quoting Ex. 1005 ¶ 175); cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Based on the preliminary record, LG has presented sufficient arguments and evidence for purposes of institution that would support the following: (1) modifying Kim’s CHANNEL BROWSER card object 1340 or TV GUIDE card object 1350 to include Bae’s on screen channel number selection window 330 so that the user may change the channel by selecting corresponding numbers using left and right arrow keys; and (2) modifying Kim’s remote controller 200 to include WD-Manual’s remote control features, including, among other things, assigning or programming any one of the shortcut/function keys A, B, C, and D to display specific types of media content or device information. See Pet. 18–25; Ex. 1005 ¶¶ 38, 60, 86, 90, 115, 127, 174, 175, 177, 188, 192–217, 283, Figs. 7, 8, 22, 38; Ex. 1006, 5–7, 11, 25–26, 138–139; Ex. 1008 ¶ 23; Ex. 1003 ¶¶ 63–83.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“In any event, the “mere disclosure of alternative designs does not teach away.” In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). A reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the claimed invention. Fulton, 391 F.3d at 1201. When combining references to establish obviousness, the appropriate consideration is whether the proposed combination would work for its intended purpose, not whether the proposed combination is inconsistent with the stated goal of one of the references, as Multimedia argues. See Prelim. Resp. 30; DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” KSR, 550 U.S. at 417 (citation omitted). To the extent Multimedia argues that LG’s reasons to combine the relevant teachings of Kim with those of Bae and WD-Manual are deficient, we determine, on the preliminary record, that LG has made a sufficient showing regarding the proposed combination. See Prelim. Resp. 31 n.4. At this stage in the proceeding, Multimedia merely offers attorney argument that Kim’s remote controller 200, which may include “other appropriate user input device[s],” is a generic statement that an improvement is possible, but it does not suffice to incorporate the specific features of Bae or WD-Manual. Id. (quoting Ex. 1005 ¶ 175); cf. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (explaining that attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value). Based on the preliminary record, LG has presented sufficient arguments and evidence for purposes of institution that would support the following: (1) modifying Kim’s CHANNEL BROWSER card object 1340 or TV GUIDE card object 1350 to include Bae’s on screen channel number selection window 330 so that the user may change the channel by selecting corresponding numbers using left and right arrow keys; and (2) modifying Kim’s remote controller 200 to include WD-Manual’s remote control features, including, among other things, assigning or programming any one of the shortcut/function keys A, B, C, and D to display specific types of media content or device information. See Pet. 18–25; Ex. 1005 ¶¶ 38, 60, 86, 90, 115, 127, 174, 175, 177, 188, 192–217, 283, Figs. 7, 8, 22, 38; Ex. 1006, 5–7, 11, 25–26, 138–139; Ex. 1008 ¶ 23; Ex. 1003 ¶¶ 63–83.” slip op. at 35
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,055,254 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1025) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · May 21, 2024 · IPR2024-00352 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–14 on all asserted grounds, finding a reasonable likelihood that claims were obvious over Woods and over Woods with Machida.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Sotera stipulation must be filed in the two parallel district court cases. See Prelim. Resp. 13–16. This same argument was raised previously in another proceeding before the Board. See Taiwan Semiconductor Mfg. Co. Ltd. v. Alidouble, Inc., IPR2023-00369, Paper 7 at 10 (PTAB July 12, 2023) (Institution Decision) (declining to discount petitioner’s stipulation because petitioner did not file it in the district court). In Taiwan Semiconductor, patent owner urged the Board to exercise discretion to deny institution under § 314(a) in light of a parallel district court litigation because, in part, petitioner had not filed the stipulation in the district court. Id. at 9. The Board disagreed and found that the Director’s Memo does not require that such a stipulation be filed in the district court, only that the petitioner must “stipulate[]” or “present[] a stipulation.” Id. (citing Director’s Memo at 3, 7). Here, we agree with the Board’s reasoning in Taiwan Semiconductor case, and we understand the Director’s Memo as only requiring Petitioner to “stipulate[]” or “present[] a stipulation.” The Director’s Memo is silent regarding any requirement for Petitioner to file a stipulation in the district court case where Petitioner is a party. Director’s Memo at 3, 7. Even if arguendo Petitioner’s Sotera stipulation should also be filed in district court, here Petitioner did file a “Notice of Sotera Stipulation” in the district court case where Petitioner is a party. Ex. 1012. This Notice states that “[LG] hereby stipulate[s], consistent with the stipulation made by the [p]etitioner in Sotera that, if the PTAB institutes an IPR in response to [LG’s] petition against [Multimedia’s] U.S. Patent No. 9,247,174 (IPR2024- 00352), [LG] will not pursue in this litigation the grounds raised or any other grounds that could have reasonably been raised before the PTAB in that instituted proceeding.” Id. at 2. Consequently, the purpose of Petitioner’s Sotera stipulation has been achieved here because it “mitigates any concerns of duplicative efforts between the district court and the Board, as well as concerns of potentially conflicting decisions.” Sotera, Paper 12 at 19 (citing Sand Revolution II, LLC v. Cont’l Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 12 (PTAB June 16, 2020) (Decision Granting Request for Rehearing) (informative)). Although Patent Owner is correct that Petitioner’s Sotera stipulation would have little, if any, impact on the district court case where Vizio is a party (see Prelim. Resp. 16–17), the Director’s interim guidance does not condition or otherwise qualify the effect of a Sotera stipulation on our exercise of discretion to deny this Petition based on any remaining defendants in the parallel district court cases that are not subject to the stipulation (see Director Memo at 7, 9). Put simply, Petitioner has filed a Sotera stipulation in this proceeding and, as a result, we will not exercise our discretion to deny its’ Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner and Patent Owner, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter of independent claim 1 would have been obvious over Woods, considered as a single reference under 35 U.S.C. § 103(a).” slip op. at 35
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose claim construction for any term, although it identifies two terms it contends are defined in the Specification of the ’174 patent. Pet. 11. Patent Owner does not dispute Petitioner’s statements on claim construction. Prelim. Resp. 30. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). To the extent necessary for institution, we note a disagreement between the parties regarding the term “application panel” in claims 1 and 10, and address it below. See infra § VI.A.10.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“the operation panels of Machida to be relevant to a television environment,” and that Machida performs panel selection automatically and not as a direct result of user selection, and therefore Machida “teaches away from combining Machida with Woods, particularly with respect to the panels described in Woods.” Prelim. Resp. 39. But Machida expressly describes a television environment in paragraph 35, which explicitly contemplates “TV type services, data broadcasting services, and data added TV services.” Moreover, we preliminarily are of the view that Patent Owner is imputing an overly narrow construction to at least claim 1 regarding the term “panel,” as discussed supra. Further, a reference does not teach away if it merely expresses a general preference for an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). For at least these reasons, we preliminarily find that Petitioner’s arguments regarding claims 1–14 under Ground 3 over Woods and Machida are sufficient at this juncture.” slip op. at 39
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,247,174 - PTAB · May 21, 2024 · IPR2024-00351 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–6, 11–16, 21, and 22 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director issued interim guidance in the form of a memo that further clarifies how we should approach analyzing the Fintiv factors. See Director Memo. Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding under Fintiv because LG filed a Sotera stipulation in both this proceeding and the district court case where LG is a party. Pet. 93; Ex. 1014.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in 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 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the preliminary record, we are persuaded that LG has presented sufficient evidence that would support a finding that Kim teaches “wherein at least one of the sources is highlighted as being associated with the first content information.” Pet. 46–48 (citing Ex. 1005 ¶¶ 211, 228; Ex. 1003 ¶¶ 133–142). Kim discloses that, “[u]pon receipt of an incoming call,” smart TV 100 automatically displays PHONE card object 1390 on display 180. Ex. 1005 ¶ 211. If the incoming call is received while PHONE card object 1390 is already being displayed on display 180, “[PHONE card object 1390] may be highlighted or otherwise distinguished from the other card objects.” Id. This is consistent with another passage in Kim, which discloses distinguishing active card objects from partially displayed card objects using “color, tint, brightness, shading, fading, or another appropriate characteristic.” Id. ¶ 228 (emphases added). In our view, these cited disclosures in Kim collectively teach or suggest that, when smart TV 100 actively displays a card object (e.g., PHONE card object 1390), it distinguishes the active card object from other card objects presented on display 180 by using highlighting.” slip op. at 29
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 9,510,040 - PTAB · May 21, 2024 · IPR2024-00354 · APJ St John Courtenay III · IPR · Institution
The Board instituted IPR on claims 1–18, finding a reasonable likelihood that claims 1, 10, and 17 are obvious over Melnychenko and Chen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. See Director’s Memo. Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director’s Memo at 3.” slip op. at 20
- 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) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the 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.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that an ordinarily skilled artisan for the ’805 patent “would have been someone knowledgeable about and familiar with the television display technology that is pertinent to the ’805 patent. A POSITA would have had a bachelor’s degree in Electrical Engineering, Software Engineering, or Computer Engineering, or equivalent training, and approximately two years of experience working in the field of television systems and networking, human-computer interaction, or related technologies. Lack of work experience can be remedied by additional education, and vice versa.” Pet. 9 (citing Ex. 1003 ¶¶ 18–20). At this stage, “Patent Owner adopts Petitioner’s definition of a person of ordinary skill in the art (“POSITA”) for the purposes of [its] Preliminary Response.” Prelim. Resp. 28. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’805 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner states “no claim term requires express construction” (Pet. 9) but further states some claim terms are provided with explicit definitions in the specification (Pet. 9–10). Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [its] Preliminary Response.” Prelim. Resp. 29. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). We note, however, that, in our obviousness analysis below, we address the scope and meaning of the claim terms “pre-defined format” and “uniform format,” as those terms pertain to the combined teachings of Melnychenko and Chen, as contested by the parties.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,419,805 - PTAB · Apr 19, 2024 · IPR2024-00110 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, and 4–6 based on the § 103 ground combining Kim, Invisalign, and Salah.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“§ 325(d), the Board uses a two-part framework: (1) determining 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, determining 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). In applying the two-part framework, we consider several non-exclusive factors, including:” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would typically have an advanced degree, such as a Masters’ Degree or Ph.D. in computer science, computer engineering, electrical engineering, or a related field, with at least two years of work in computer vision, image analysis, medical imaging, or related areas.” Pet. 12–13 (citing Ex. 1002 ¶¶ 50–51). Petitioner also contends a person of ordinary skill in the art “could have less education but significant professional experience in one or more of these fields” and “could be a member of an interdisciplinary team.” Id. at 13. Patent Owner does not contest Petitioner’s definition at this stage. Prelim. Resp. 16. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). As noted above, at this stage, Patent Owner does not dispute Petitioner’s proposals. After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly address Petitioner’s contentions for step 3 of claim 1 for purposes of this Decision. For purposes of providing guidance to the parties, we preliminarily agree with Petitioner’s construction of “interior tooth outline” and “exterior tooth outline,” as supported by the Specification. See Ex. 1001, 5:8–15; Ex. 1004, 241–242 (Patent Owner stating “[a]s specified at page 7, lines 3–10, of the subject application, the interior tooth outline qualifies a line which delimits the free end of a tooth on an image and the exterior tooth outline qualifies a line which delimits part of the aligner on an image”). We also preliminarily agree with Petitioner, on this record, that step 2 of claim 1 recites a conditional limitation, that, if met, is not needed to be performed. See, e.g., Cybersettle, Inc. v. Nat’l Arbitration Forum, 243 Fed.Appx. 603, 607 (Fed. Cir. 2007) (“It is of course true that methods steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). This is supported by the Specification: In one embodiment, the dentition image is the aligner image. In other words, the same updated image makes it possible not only to see the aligner outline 28 but also to see the dentition outline 16, through the aligner (FIG. 3). This single image therefore makes it possible to compare aligner 20 and dentition outlines. Advantageously, readjustment step 2), described later, is not needed. Ex. 1001, 6:15–20. These constructions are preliminary and based on the current record. The parties may further address these issues during trial.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combination of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combination of prior art. slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,109,945 - PTAB · Apr 19, 2024 · IPR2024-00052 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 7, 8, and 13–16 because Align showed a reasonable likelihood that claim 1 was obvious over Kim, Invisalign, Salah, and Maninis.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),6 which states, among other things, 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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, Paper 6 at 7–8. There is no dispute that Salah was of record during prosecution of the ’248 patent. Ex. 1001, code (56). There is no evidence, however, that the Examiner substantively considered Salah during prosecution. Nor is there any evidence that Kim, Invisalign, and Maninis were of record during prosecution or that the Office considered the Kim, Invisalign, Salah, and Maninis combination proposed by Petitioner. Although Patent Owner appears to argue that the disclosure in Kim, Invisalign, and Maninis is cumulative to disclosure in the ’248 patent, Patent Owner does not meaningfully explain how the references asserted (i.e., Kim, Invisalign, and Maninis) are cumulative of the references cited during prosecution in light of this disclosure in the ’248 patent. For example, in the Reasons for Allowance, the Examiner stated that the references cited (Matov and Wen) do not teach or suggest the limitations “more than 1 week after the start of the treatment with the aligner, acquisition of at least one image at least partially representing the aligner in a service position in which it is worn by a patient,” “tooth attribute relating to a separation between the tooth represented by the analysis tooth zone, and the aligner represented on the analysis image,” and “a cellphone is used to acquire the analysis image.” Ex. 1004, 960–961. Petitioner relies on Kim, Invisalign, and Salah to teach these limitations, see Pet. 28–41, and argues that the missing elements identified by the Examiner are found in these prior art references, so they are not cumulative. Id. at 61. On this record, we are not persuaded otherwise, as Patent Owner does not address all of these limitations, or explain how Kim, Invisalign, or Maninis are cumulative of the references considered by the Examiner (Matov and Wen), and thus, does not sufficiently support the position that the Examiner considered combinations the same as, or similar to, those presented by Petitioner. Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth a combination of prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art “would typically have an advanced degree, such as a Masters’ Degree or Ph.D. in computer science, computer engineering, electrical engineering, or a related field, with at least two years of work in computer vision, image analysis, medical imaging, or related areas.” Pet. 14 (citing Ex. 1002 ¶¶ 60–61). In addition, Petitioner contends, a person of ordinary skill in the art “could have less education but significant professional experience in one or more of these fields” and “could be a member of an interdisciplinary team.” Id. Patent Owner does not contest Petitioner’s definition at this stage. Prelim. Resp. 17. We find Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the prior art of record, and, therefore, adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“Only terms that are in controversy need to be construed, and then only to the extent necessary to determine whether to institute inter partes review. 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))). After reviewing the parties’ arguments and evidence, we determine that we do not need to expressly construe any term for purposes of this Decision.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,049,248
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.