- PTAB · Feb 12, 2025 · IPR2024-01139 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR of claims 1–7, 9, and 14–51 on all petition grounds, finding a reasonable likelihood that the TML6–Fandrianto combination renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“presented art includes art listed on an Information Disclosure Statement (IDS) and “art made of record by the Examiner.” Id. at 7–8. Here, the Petition’s challenges are based on TML6 and Fandrianto. Pet. 2. TML6 is substantially the same as art previously presented to the Office because the ’469 patent discusses TML6. See, e.g., Ex. 1001, 8:43–53, 11:33–13:29. Fandrianto was made of record by the Examiner. Ex. 1002, 310; Ex. 1001, code (56). Thus, the first part of the framework is satisfied, and we must proceed to the second part.” slip op. at 13
- Skill levelOther
“We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 26. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 6,950,469 - PTAB · Feb 12, 2025 · IPR2024-01140 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–51 and all petition grounds, finding a reasonable likelihood that claims 1–20, 22–42, and 44–51 are obvious over TML6 and Fandrianto, and claims 21 and 43 over those references …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Absent specific evidence, the Board typically “will not attempt to predict how the district court in the related district court litigation will proceed because the court may determine whether or not to stay any individual case . . . based on a variety of circumstances and facts beyond our control and to which the Board is not privy.” Sand Revolution II LLC v. Cont’l Intermodal Grp., IPR2019-01393, Paper 24, 7 (PTAB June 16, 2020) (informative, designated July 13, 2020). We decline to speculate here. Thus, the first Fintiv factor is neutral.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Even assuming that evaluating the summary of TML6 in the challenged patent’s background were the same as evaluating the TML6 code, Petitioner has shown under Becton, Dickinson factors (e) and (f) that the Office erred by overlooking the TML6-Fandrianto combination for the reasons discussed below in the analysis of Petitioner’s challenges. See infra Section II.E. That is, we disagree with Patent Owner that Petitioner has failed to meet its burden. Prelim. Resp. 36–37. Thus, none of Becton, Dickinson factors (c), (e), and (f) weigh in favor of denying the Petition under § 325(d). 4. Conclusion We do not exercise our discretion to deny the Petition under § 325(d).” slip op. at 16
- Skill levelOther
“Patent Owner argues that a person of ordinary skill in the art “would be an electrical and/or computer engineer with one to two years of experience relating to video coding hardware and/or software.” Prelim. Resp. 26. We need not resolve this dispute at this stage because the decision here would be the same under either definition. If the parties believe that the level of skill in the art would affect the outcome in this case, the parties must brief that issue. The failure to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction The Board is required to construe only those terms that are in controversy, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party argues that the Board needs to construe any terms to determine whether to institute an inter partes review. See Pet. 11; Prelim. Resp 27. On the current record, no terms are in controversy. Thus, no claim term needs to be construed in this decision.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 7,280,599 - PTAB · Feb 12, 2025 · IPR2024-01141 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of all challenged claims on all petitioned grounds, finding a reasonable likelihood that Amazon would prove at least one claim obvious over the asserted references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2024). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 4–17, 19–26, 28, 29, 31–33, 36–49, 51–59, 61, 62, and 64–83 in the ’273 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“For the reasons discussed above, factors (1) through (5) do not favor discretionary denial. See supra Sections III.C.1–III.C.5. Thus, we do not reach “the compelling merits analysis.” See CommScope, IPR2022-01242, Paper 23 at 4–5. Further, the circumstances Patent Owner identifies do not warrant exercising discretion under § 314(a) to deny institution. See Prelim. Resp. 68–69.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“the same art previously presented to the Office,” we turn to the second part of the Advanced Bionics framework and consider Becton factors (c), (e), and (f) in determining “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10. For the reasons explained below, Petitioner has demonstrated a material error by the Office. Becton factor (c) concerns the extent to which the asserted references were evaluated during prosecution, including whether a rejection rested on any reference. Becton, IPR2017-01586, Paper 8 at 17. For instance, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f).” Advanced Bionics, IPR2019-01469, Paper 6 at 10. Under Becton factor (c), evaluating the ’273 patent’s description of TML6 differs significantly from evaluating the source code itself. As Petitioner asserts, the TML6 source-code files comprising Exhibit 1005 include “far greater coverage of the components and functionalities of the TML6 codec” and were “not considered by the Examiner.” See Ex. 1001, 8:38–47, 11:25–13:27, 28:36–41, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63, Figs. 13a–13c; Ex. 1005; Pet. 126. As explained in the patentability analysis below, Petitioner relies on details in the source code about how the oneforthpix() function works and interacts with the imgY, img4Y_tmp, and mref data structures to establish unpatentability. See infra Sections V.D.4(a)–(d). The ’273 patent does not discuss those software instrumentalities. See, e.g., Ex. 1001, 8:38–47, 11:25–13:27, 44:9–11, 46:31–41, 47:27–48:6, 49:24–50:63. Based on the current record, we see no evidence that the Examiner evaluated the source code itself, which forms the foundation for Petitioner’s challenges.” slip op. at 26
- Skill levelOther
“The parties seem to agree generally about the level of ordinary skill in the art. At this stage of the proceeding, neither party contends that any differences between their respective descriptions of an ordinarily skilled artisan would impact the patentability analysis. During the instituted trial, we encourage the parties to address whether there are any differences between their respective descriptions that would impact the patentability analysis. If so, they should explain how those differences impact the patentability analysis. Based on the current record, our analysis would not change if we adopted Petitioner’s description of an ordinarily skilled artisan or Patent Owner’s description.” slip op. at 30
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,036,273 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 10, 2025 · IPR2023-01213 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 10, 12, 13, 21, and 22 are unpatentable as obvious over Crane and Spain; claim 11 is dismissed as moot.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“after November 13, 2018, a patent claim shall be construed using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b). 37 C.F.R. § 42.100(b) (as amended Oct. 11, 2018). This rule adopts the same claim construction standard used by Article III federal courts, which follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), and its progeny. Under this standard, the words of a claim are generally given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. See Phillips, 415 F.3d at 1312–13.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for petitioner
“Pet. 15–18. Petitioner’s proposed constructions are consistent with the claim construction decision from related litigation or the parties’ prior stipulations regarding claim construction. Id.; Ex. 1023 (parties’ stipulation); Ex. 1027 (parties’ stipulation); Ex. 1028, pp. 24–32 (District Court order). Patent Owner does not dispute Petitioner’s proposed claim construction. PO Resp. passim. We note that, the District Court held, in a non-final order, that claims 1 and 12 were indefinite because of the term “in proximity.” Ex. 1028, 24– 28. The District Court, however, did not issue a final ruling with respect to claims 1 and 12 because the parties narrowed the dispute concerning the ’784 Patent to only claim 11. Ex. 2018, ¶ 3. We also note that we do not need to assess whether or not the term “in proximity” renders claims 1 and 12 indefinite to assess the Petition. Rather, we agree with Petitioner that the “in proximity” language is at least broad enough to “encompass” the matter set forth in Petitioner’s claim construction. See Pet. 17, 37–41. This is sufficient definition to make it logically possible to reach the merits of Petitioner’s challenge. See Intel Corp. v. Qualcomm Inc., 21 F.4th 801, 813 (Fed. Cir. 2021) (holding that indefiniteness only precludes a patentability determination 102 or 103 if the indefiniteness makes it “logically impossible” to reach such a decision).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“Petitioner argues that it would have been obvious to implement Spain’s location determination system as part of Crane’s system and that such an implementation would have a reasonable expectation of success. Pet. 26 (citing Ex. 1008 ¶¶ 111–112). Patent Owner does not dispute Petitioner’s contentions regarding this recitation. Based on the entire trial record, we agree with Petitioner’s analysis and credit Mr. William’s testimony supporting Petitioner’s position. Thus, in view of the evidence of record, we find that Crane and Spain disclose the preamble of recitation 1.1.” slip op. at 20
Patent outcomesUS 9,097,784 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,097,784 - Amazon.Com, Inc. / Amazon.Com Services LLC v. Nokia Technologies OYInstitution deniedPTAB · Feb 5, 2025 · IPR2024-00920 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 22–24, 26, 29–33, 35, or 38 were unpatentable over the asserted Koga-based grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that Petitioner has not established a reasonable likelihood that it will prevail in proving the unpatentability of at least one challenged claim of the ’991 patent. Accordingly, we deny Petitioner’s request and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. at 25–26 (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Based on the ordinary meaning of the phrases, “spatial samples” and “spatial information” must refer to different information. Because the “spatial samples [are] decoded into spatial information,” the decoded “spatial information” must be different than the coded “spatial samples.” If “spatial information” were the same as “spatial samples,” then there would be nothing to decode. That construction is consistent with the claim construction rule that different terms are presumed to have different meanings. See MicroStrategy Inc. v. Bus. Objects Ams., 238 F. App’x 605, 609 (Fed. Cir. 2007) (citing CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F3d 1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume that the use of these different terms in the claims connotes different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006) (“[T]he use of two terms in a claim requires that they connote different meanings . . . .”)). Here, we see no evidence that the claim phrases have the same meaning. To the contrary, the ’991 patent uses the term spatial samples to refer to the image’s pixel values. See, e.g., Ex. 1001, 2:65–67 (“the prediction error signal for a single image block is constructed using both transform basis functions and spatial samples (i.e., pixel values)”) (emphasis added); id. at 4:21–26 (same). The spatial information, however, refers to the result of decoding. See, e.g., id. at 3:29–30 (“the plurality of spatial samples are decoded into decoded spatial information”) (emphasis added); id. at 6:53–55 (“the decoded spatial information and reconstructed prediction of the image block are added together to form the decoded representation of the image block”) (emphasis added); id., Fig. 5, 520 (showing “Decoded Spatial Info”). This is consistent with the claim’s plain language. See id. at 10:1–2 (claim 22 reciting “decoding, by a processor, the plurality of spatial samples into decoded spatial information”) (emphasis added). Accordingly, “spatial samples” and “spatial information” do not refer to the same thing.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We are not persuaded by Petitioner’s argument. Petitioner maps both spatial samples and spatial information to the residual of the prediction error. Compare Pet. 37 (referring to spatial samples as the residual of the prediction error), with id. at 44 (referring to spatial information as the residual of the prediction error). However, because spatial samples and spatial information cannot refer to the same thing, they cannot both be the residual of the prediction error. See Section II.C.1 supra. Accordingly, Petitioner has not sufficiently shown that claim 22, along with dependent claims 23, 24, 26, and 30 would have been obvious over Koga. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the independent claims from which they depend are nonobvious.”); Pet. 47–63 (relying on the analysis of claim 22 for the spatial samples and spatial information limitations). With regard to independent claim 31, along with dependent claims 32, 33, and 35, Petitioner relies on the same arguments discussed above for limitation 22a and 22c to show that Koga teaches commensurate limitations 31c and 31d. See Pet. 54 (“As explained above, Koga teaches the shared substantive limitations of [22a]–[22d] (supra §§VI.A.1) that correspond to limitations [31b]–[31e].”). Accordingly, for the same reasons discussed above for claim 22, we are not sufficiently persuaded by Petitioner’s arguments that independent claim 31, along with dependent claims 32, 33, and 35 would have been obvious in view of Koga.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - PTAB · Feb 5, 2025 · IPR2024-00921 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–3, 5–15, 17–21, and 39 on all asserted 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, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that a person having ordinary skill in the art “would have had a (1) bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study, and (2) approximately two to three years of practical experience with video and/or image processing or coding.” Pet. 25–26 (citing Ex. 1003 ¶¶ 60–63). Petitioner further argues that “[a]dditonal experience can substitute for the level of education, and vice-versa.” Id. at 26 (citing Ex. 1003 ¶¶ 60–63). Petitioner also identifies knowledge that a person having ordinary skill in the art would have. Id. (citing Ex. 1003 ¶ 64). Patent Owner states that it “has applied Petitioner’s [person having ordinary skill in the art] for the sake of this Response.” Prelim. Resp. 21. Because Petitioner’s proposed level of ordinary skill in the art is consistent with the field of the invention of the ’991 patent and not disputed by Patent Owner, we adopt Petitioner’s formulation of the person having ordinary skill in the art.7” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“1. Spatial Coding Petitioner argues that “spatial coding” means “coding in the spatial domain.” Pet. 28. According to Petitioner, the specification of the ’991 patent “describes spatial coding as the coding (e.g., quantizing and entropy coding) of pixel values in the spatial domain ‘without transform,’ but without limiting it to a particular algorithm or technique.” Id. (citing Ex. 1001, 5:6–23, Fig. 4). “Patent Owner does not contest Petitioner’s construction for the sake of this [Patent Owner Preliminary Response], but reserves the right to challenge this construction in the event of institution.” Prelim. Resp. 21. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“3. “The Difference Signal” (Claims 13 and 14). Petitioner argues that claims 13 and 14 “contain a drafting error that recites ‘the difference signal,’ without antecedent basis.” Pet. 29. According to Petitioner, a person having ordinary skill in the art “would have understood ‘the difference signal’ in these claims to mean ‘a difference signal representing differences between sample values of a predicted block of data and values for an original input block’ as recited in limitation [1a] of claim 1.” Id. For purposes of its Preliminary Response, Patent Owner “agree[d] with Petitioner’s construction of ‘the difference signal’ in Claims 13 and 14.” Prelim. Resp. 24. Accordingly, for purposes of this Decision, we adopt Petitioner’s undisputed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,077,991 - Vusiongroup SA v. Hanshow Technology Co., Ltd.Institution deniedPTAB · Jan 14, 2025 · IPR2024-01045 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of prevailing on any of its four § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner. At best, Schwartz’s disclosure cited by Petitioner teaches aggregating product information obtained from different stores, but neither the Petition nor Dr. Wolfe explains sufficiently how aggregating product information would have suggested cross-correlating different product facing bounding boxes to one of ordinary skill in the art. See Pet. 35–37; Ex. 1003 ¶¶ 148–151. We are not persuaded that aggregating product information and cross-correlating different product facing bounding boxes would have been recognized as similar or comparable processes. Moreover, Petitioner does not even assert that one of ordinary skill in the art would have recognized that Schwartz cross-correlates one or more product facing bounding boxes and one or more other product facing bounding boxes as required by limitation [1.5]. Instead, Petitioner asserts only that one of ordinary skill in the art “would have recognized Schwartz . . . cross-correlates that product and affiliated shelf added). Furthermore, limitation [1.5] recites cross-correlating different product facing bounding boxes by matching shelf label content of the different product facing bounding boxes. But Petitioner does not explain adequately how the combination of Schwartz and Katircioglu satisfies this requirement. Pet. 35–37. Although Petitioner asserts that the combination discloses associating shelf label content with product facing bounding boxes (id. at 30–35), we are not directed to any disclosure in either Schwartz or Katircioglu that teaches or suggests matching the shelf label content of different product facing bounding boxes. For the above reasons, Petitioner fails to persuade us that the combination of Schwartz and Katircioglu discloses limitation [1.5]. Therefore, we determine Petitioner has not met its burden to show a reasonable likelihood it would prevail with respect to the contention that claim 1 is unpatentable over the combination of Schwartz and Katircioglu.” slip op. at 13
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that [a] person of ordinary skill in the art (“POSITA”) in November 2016 would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and two or more years of work experience or research related to computer vision, image analytics, machine learning, artificial intelligence or automated object recognition methods and systems, or equivalent training and work experience in the field. Formal education can substitute for work experience and relevant work experience could substitute for formal education. Pet. 8–9 (citing Ex. 1003 ¶ 29). Patent Owner indicates it agrees with Petitioner’s definition of a person having ordinary skill in the art. Prelim. Resp. 4–5. 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 definition.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[n]o formal claim constructions are necessary ‘to resolve the controversy.’” Pet. 9 (quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011)). Petitioner adds that there is a rebuttable presumption that § 112(f) does not apply because the challenged claims do not recite “means.” Id. In the event the presumption is overcome with respect to the claim terms “processor” and “product classifier,” Petitioner identifies the disclosure describing the corresponding structure for these terms. Id. at 9–10. Patent Owner contends that claim construction is not necessary and the claims should be given their plain and ordinary meaning. Prelim. Resp. 5. Regarding the claim terms “processor” and “product classifier,” Patent Owner argues that Petitioner has not advanced any argument to rebut the presumption that § 112(f) does not apply. Id. at 6. any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,087,272 - PTAB · Jan 8, 2025 · IPR2024-00799 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1–36 on all asserted grounds, finding a reasonable likelihood of success on at least one claim based on obviousness over Nguyen, Zadesky, Oda, and Gettemy.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). CTPG, 59. Nonetheless, the Consolidated Trial Practice Guide recognizes that more than one petition may be necessary “for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare.” Id. The present circumstance is consistent with the exception referenced in the Consolidated Trial Practice Guide. There is a dispute about the effective filing date of the ’602 patent (see IPR2024-00798), which requires arguments to be made under multiple prior art references. Although Patent Owner cites some non-precedential cases denying multiple petitions when there was a priority dispute (Prelim. Resp. 52), we do not find the reasoning in those cases persuasive. Instead, we find the reasoning in the cases Petitioner cites to be persuasive. See Medtronic, Inc. v. Teleflex Innovs. S.A.R.L, IPR2020-00130, Paper 20 at 11–13 (PTAB June 26, 2020); NRG Energy, Inc. v. Midwest Energy Emissions Corp., IPR2020-00832, Paper 17 at 16–18 (PTAB Oct. 26, 2020). Additionally, we do not believe that considering the two petitions will unduly burden the Board. Moreover, the arguments presented in the Petition regarding the combination of Nguyen, Zadesky, Oda, and Gettemy, based on the current record, are compelling. See Section II.F.5. Accordingly, we decline to exercise our discretion to deny institution of the Petition.8” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We also do not agree that Gettemy is substantially the same as either Oda US Pub or Hoshi. According to Patent Owner, “Gettemy, at best, teach[es] a stacked configuration of engine and battery, and art teaching a stacked configuration of engine and battery was considered and specifically distinguished during prosecution of the ’602 Patent, and are thus even further cumulative of the considered art.” Prelim. Resp. 42 (citing Ex. 2001 ¶ 136). Patent Owner argues that Oda US Pub and Hoshi also teach a “stacked configuration of battery and engine such that the input buttons are not above and adjacent the battery as well as the engine.” Prelim. Resp. 42–44. However, as discussed below in Section II.F.5.f, we do not agree with Patent Owner’s argument that Gettemy teaches a stacked battery and engine. Instead, based on the current record, we determine that Gettemy teaches that “a user input section located above the engine section and a battery” and that “the user input section is located adjacent the battery and the engine section.” Id. Because that design materially differs from Oda US Pub and Hoshi, Gettemy is not substantially the same as those references.11 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics 11 Because Gettemy is not substantially the same as a reference that was previously considered by the Office, we need not consider Patent Owner’s remaining arguments regarding other references Petitioner is relying on. framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the ultimate definition of a [person having ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11 (citing Pet. 11). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes 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.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. 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))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision
Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.
RulingsFinal written decision- 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 [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. 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 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29
Patent outcomesUS 9,941,830 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,941,830
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.