- PTAB · Sep 25, 2024 · IPR2024-00627 · APJ Jason M Repko · IPR · Institution
The Board instituted review of claims 19–36 on all grounds, finding a reasonable likelihood that claims 19, 25, and 31 are unpatentable over Walker and Karczewicz I and II.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under 35 U.S.C. § 325(d), the Board may exercise discretion to deny a petition that presents the same or substantially the same art or arguments as were previously presented to the Office. To evaluate arguments for discretionary denial under § 325(d), the Board uses a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. If a condition in the first part of the framework is satisfied and the petitioner fails to make a showing of material error, the Director generally will exercise discretion not to institute inter partes review.” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (POSITA): at the time of the alleged invention of the ’267 patent would have had a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding. Additional experience can substitute for the level of education, and vice-versa. Pet. 11–12 (citing Ex. 10038 ¶¶ 33–36). Patent Owner applies Petitioner’s definition. Prelim. Resp. 27. For this decision, we also apply this definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. 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)). 8 Exhibit 1003 is a declaration of Immanuel Freedman, Ph.D. According to Petitioner, the term “‘precision’ is satisfied by, but not necessarily limited to, ‘a number of bits needed to represent possible values.’” Pet. 12. According to Patent Owner, the Preliminary Response does not address the definition of “precision” because Patent Owner’s arguments do not depend on it. Prelim. Resp. 27. At this stage, we need not construe the term “precision” because it is not necessary to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionOther
“values and final predictions, however, is not expressly recited in the claim. See id. Rather, claim 19 merely recites a “first” and “second” prediction. As noted by both parties, the claim limits predictions to those obtained from the reference block. See Ex. 1001, 23:35–39.11 The first and second reference blocks are determined from motion vectors. Id. at 21:15–31. The first and second predictions form a “combined prediction.” Id. at 21:28–29. Under Patent Owner’s description of intermediate values (Prelim. Resp. 46–56), the first and second predictions can be thought of as intermediate values with respect to the combined prediction. Thus, the plain language of the claim is not consistent with the argument that intermediate values cannot be predictions. Nor do we see, at this stage and on this record, any part of the specification of the ’267 patent that provides a clear standard for determining what it means for a value to be a “final” prediction. Indeed, the “claims ‘must be read in view of the specification,’” which “‘is always highly relevant” and usually dispositive. Phillips, 415 F.3d at 1315 (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The specification “is the single best guide to the meaning of a disputed term.’” Id.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,805,267 - PTAB · Sep 24, 2024 · IPR2024-00691 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 8–11 on all petitioned grounds, finding a reasonable likelihood that Amazon would show at least one challenged claim obvious.
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) (2018). 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 8–11 in the ’321 patent on all challenges included in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–16 (PTAB Aug. 24, 2022) (precedential), the Board accorded little weight to a proffered expert’s declaration that (1) repeated verbatim a conclusory statement in a petition and (2) did not “cite to any additional supporting evidence or provide any technical reasoning to support” the conclusory statement. But verbatim duplication between a petition and a declaration does not require giving the declarant’s testimony little or no weight. See Unified Patents, LLC v. Togail Techs., Ltd., IPR2023-00338, Paper 7 at 11 (PTAB Aug. 18, 2023) (declining to give “little or no weight” to declaration testimony “simply because it is verbatim to” statements in a petition); Hum Indus. Tech., Inc. v. Amsted Rail Co., IPR2023-00540, Paper 10 at 37 (PTAB Aug. 11, 2023) (explaining that “[i]f declaration testimony is supported sufficiently and, in turn, supports contentions in the Petition, we do not give it little to no weight simply because it is repeated in the Petition”); Epic Games, Inc. v. IngenioShare, LLC, IPR2022-00202, Paper 29 at 9 (PTAB May 19, 2023) (declining to disregard a declarant’s testimony that mirrored a brief). The Board decisions that Patent Owner cites do not hold otherwise. See Kinetic, IPR2014-00529, Paper 8 at 14–16; Volkswagen, IPR2021-00717, Paper 12 at 34–38; Samsung, IPR2022-00251, Paper 17 at 23–26; Prelim. Resp. 21–22.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention would have had “a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding.” Pet. 9. Petitioner also asserts that “[a]dditional experience can substitute for the level of education, and vice-versa.” Id. Dr. Havlicek’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 18–20. Patent Owner asserts that the Preliminary Response “does not depend on the level of ordinary skill in the art.” Prelim. Resp. 17. For purposes of the Preliminary Response, Patent Owner applied Petitioner’s description of an ordinarily skilled artisan. Id. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’321 patent as well as the asserted references. See Ex. 1003 ¶ 20.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,050,321 - PTAB · Sep 23, 2024 · IPR2024-00626 · APJ Jason M Repko · IPR · Institution
Instituted review of claims 1–18 on all grounds; Petitioner showed a reasonable likelihood of prevailing on the Walker and Karczewicz I–Karczewicz II obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Thus, with respect to the ground based on Walker, we determine that the same or substantially the same art was not previously presented to the Office under part one of Advanced Bionics, and thus, we do not proceed to part two.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, the Board must determine “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) (2018). For the reasons discussed in this decision, the Petition meets this standard. Thus, the Board institutes an inter partes review.” slip op. at 2
- 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 time of the alleged invention of the ’267 patent would have had a (1) Bachelor’s degree in electrical engineering, computer engineering, computer science, or a comparable field of study such as physics, and (2) approximately two to three years of practical experience with video encoding/decoding. Additional experience can substitute for the level of education, and vice-versa. Pet. 11–12 (citing Ex. 10038 ¶¶ 33–36). Patent Owner applies Petitioner’s definition. Prelim. Resp. 27. For this decision, we also apply this definition.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. 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)). According to Petitioner, the term “‘precision’ is satisfied by, but not necessarily limited to, ‘a number of bits needed to represent possible values.’” Pet. 12. According to Patent Owner, the Preliminary Response does not address the definition of “precision” because Patent Owner’s arguments do not depend on it. Prelim. Resp. 27. At this stage, we need not construe the term “precision” because it is not necessary to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 11,805,267 - PTAB · Sep 9, 2024 · IPR2024-00101 · APJ Steven M Amundson · IPR · Institution
Instituted IPR of claims 1–20 on all petition challenges because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Director reviewDirector review, grantedGranted
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Further, the Director remanded the case to the panel and instructed the panel “to determine whether the Petition presents a reasonable likelihood of prevailing with respect to at least one of the challenged claims under 35 U.S.C. § 314(a), and to determine whether to institute inter partes review accordingly.” Paper 12, 5–6. As noted above and explained in the patentability analysis below, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one of the challenged claims. See supra § I; infra §§ III.E–III.H.” slip op. at 4
- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDecided for petitioner
“On August 20, 2024, the Director granted Petitioner’s request and vacated the panel’s decision denying institution. Paper 12, 6. In doing so, the Director determined that Menard is not a real party in interest or a privy of Petitioner under § 315(b) and that § 315(b) does not bar institution. Id. at 5. The Director also determined that § 315(a) “does not apply to the ‘cross-claims’ asserted by Petitioner” and that § 315(a) does not bar institution. Id. Additionally, the Director declined to exercise discretion under § 314(a) to deny institution in view of the Wisconsin case because Petitioner submitted a Sotera stipulation. Id.; see Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)1 at 3, 7–8 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)).” slip op. at 4
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,299,336 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00330 · APJ Arthur M Peslak · IPR · Institution
The Board instituted inter partes review of claims 1–19 on all four asserted obviousness grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Analysis The Director of the USPTO has proscribed an interim procedure for discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen 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, it mitigates concerns of potentially conflicting decisions and duplicative efforts between district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1048, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 9
- 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(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review 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.” Considering the Petition, the Preliminary Response, the Preliminary Reply, and the Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’656 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’656 patent on all grounds stated in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”)); see also RightQuestion, LLC, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. Jones’s testimony summarizing the relevant disclosures from Stone, Hoyos, and Varghese on which he relies to form his opinions. Ex. 1003 ¶¶ 37–46. Patent Owner also ignores Dr. Jones’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Stone, Hoyos, and Varghese with a reasonable expectation of success. Ex. 1003 ¶¶ 54–68. This testimony contains specific detailed citations to the references in support of Dr. Jones’s opinions. We, thus, find that Dr. Jones’s testimony in support of the Petition, taken as a whole, is supported sufficiently with evidence and technical reasoning at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition. ii.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Although Stone does not explicitly mention the word “fraud,” it discloses that user device 408 may include user identifiers 418 that “may include attributes related to the user such as . . . a user name, password, photograph image, biometric id.” Ex. 1008 ¶ 45. Dr. Jones testifies that “Stone’s biometric information/‘biometric id’ is typically received and stored on user device 404 during an enrollment/registration process” and “is used for subsequent comparison with the later captured data to provide an authentication decision for a transaction request.” Ex. 1003 ¶ 92 (citing Ex. 1014 ¶ 9; Ex. 1021, Abst.; Ex. 1023, 8:3–9:39). Patent Owner’s attorney argument that Stone does not mention fraud or biometric authentication ignores the cited disclosure in Stone and Dr. Jones’s testimony which is sufficiently supported by the references he cites. Further, Patent Owner’s argument that Stone does not discuss techniques for preventing fraud is undercut by its acknowledgement that Stone discloses “authentication of the user[] by the payment server where the user’s account information is stored.” Prelim. Resp. 44 (citing Ex. 1008 ¶ 46). Patent Owner’s argument that Hoyos is not concerned with improving an electronic display or a user’s experience (Prelim. Resp. 36) is unavailing because it fails to address Petitioner’s proposed combination. Petitioner does not rely on Hoyos to improve an electronic display or the user experience but proposes modifying Stone by “implement[ing] Hoyos’ spoofing resistant biometric authentication for fraud detection” with the resulting benefit of “improved deterrent against attempted fraudulent transactions and decreased rejection of valid customers.” Pet. 16 (citing Ex. 1003 ¶ 62). With respect to adding Varghese to the combination of Stone and Hoyos, Patent Owner’s argument is that Petitioner “fails to explain why a [person of ordinary skill in the art] would have combined location authentication mentioned in Varghese with Hoyos’s biometric authentication techniques.” Prelim. Resp. 37. Patent Owner, however, does not address Petitioner’s assertions that a person of ordinary skill in the art would have implemented Varghese’s multifactor real-time authentication including location authentication “for improved security” and the other alleged benefits for doing so stated in the Petition. Pet. 22.” slip op. at 43
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,713,656 - Apple Inc. v. Carbyne Biometrics, LLCInstitution deniedPTAB · Aug 1, 2024 · IPR2024-00333 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“The test for written description support is whether the application reasonably would have conveyed to one with ordinary skill in the art “the inventor possessed the invention at the time of that original disclosure.” Pandrol USA, LP v. Airboss Ry. Prods., Inc., 424 F.3d 1161, 1165 (Fed. Cir. 2005); see also Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991) (“the applicant must also convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention”). The disclosure in the provisional application as cited by Patent Owner regarding policies is broad and does not convey with reasonable clarity what specifically are the policies, such as a policy for backup based on whether the first and second devices are of the same brand. The broad disclosure does not indicate possession by the inventor the narrow and specific limitation recited in independent claims 1, 18, and 25, i.e., “based at least in part on the first device being a same brand as a second device, initiating a backup, to the second device, of at least a portion of the at least one record.” Ex. 1001, 25:7–10, 26:30–32, 28:23–25. Patent Owner states: “A determination ‘based on’ policies and the identity of the device would have conveyed to a POSITA that the backup could have been based on a policy including the device being of the same brand as the second device.” Prelim. Resp. 46 (emphasis in original). The assertion is misplaced because it refers to what “could have been” a policy, rather than what policy the provisional application disclosure conveys the inventor actually possessed. What potentially “could have been” is mere speculation, not written description indicating possession.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. McDaniel, Petitioner asserts a person of ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 8 (citing Ex. 1003 ¶¶ 18–22). 9 The record does not include any evidence of secondary considerations of nonobviousness. On this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which applies to experience and which would improperly extend the scope of experience to the realm of an expert. It is supported by the testimony of Dr. McDaniel and not disputed by Patent Owner (Prelim. Resp. 12). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2024). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’105 patent. Accordingly, we decline to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Petitioner asserts: Kodama recognizes “if data restoration is to be performed to a different product or a different manufacturer, the format and product proprietary information of data between the products will differ.” APPL-1010, [0157]. POSITA would recognize this differing format can create compatibility issues and thus would recognize an advantage of, and reason for, basing the initiation of data transfer to the second device on brand and thereby avoiding these compatibility issues as taught by Kodama. APPL- 1003, ¶190. Pet. 60. But the same brand requirement of Kodama is not provided to solve any problem with differing formats. Kodama states: At Step 1313 of the restoration processing, if data restoration is to be performed to a different product of a different manufacturer, the format and product proprietary information of data between the products will differ. Thus, before the restoration processing function of the online backup service system 0128 sends the data read at Step 1318 to the HDD recorder 0116, the data format is converted into the file format of the HDD recorder 0116 of the restoration destination. Ex. 1010 ¶ 157. Kodama does not describe format compatibility as presenting any problem. Requiring brand identity between the first device and the other devices of the user in Jakobsson ’351 to synchronize data among all of the user’s devices is also not an advantage. The devices of the user in Jakobsson ’351 are devices the user already owns, possesses, and uses. They are not a new device as in the case of Kodama, where a broken device may be expected to lead to the user acquiring a new device of the same brand as replacement. Petitioner provides no explanation as to why one would expect all of the user’s devices in Jakobsson ’351 would be of the same brand. Applying a same-brand requirement would substantially undermine and may even render inoperative Jakobsson ’351’s feature of synchronizing user data among all of the user’s devices. We do not see this result as either an advantage or an improvement.” slip op. at 51
§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,475,105 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00329 · APJ Steven M Amundson · IPR · Institution
The Board instituted review of claims 1, 2, 4–7, 9, 10, 12–15, 17, and 20–23 on all Petition grounds after finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). 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).” slip op. at 2
- Other 314aDenied
“determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 90
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,972,010 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Aug 1, 2024 · IPR2024-00331 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–12, 14–18, and 20–23 based on a reasonable likelihood of success on at least one claim, applying all challenges in the Petition.
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) (2018). 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).” slip op. at 2
- Other 314aOther
“V. CONCLUSION Based on the arguments and evidence presented by the parties, we determine that there is a reasonable likelihood Petitioner would prevail with respect to at least one claim challenged in the Petition. Hence, we institute an inter partes review of all challenged claims on all challenges included in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018) (noting that the language of 35 U.S.C. § 314(b) “indicates a binary choice— either institute review or don’t”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute as requiring “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); 37 C.F.R. § 42.108(a). Additionally, we decline to exercise our discretion under § 314(a) to deny institution.” slip op. at 95
- Obviousness (§103) › Analogous artAnalogous artInstituted
“4. WHETHER PETITIONER ESTABLISHES A REASONABLE LIKELIHOOD THAT STONE IS ANALOGOUS ART” slip op. at 38
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,526,886 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00334 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR of claims 1–3, 5, 7, 8, 10–15, 17, 19, and 22–25 on all petitioned grounds, finding a reasonable likelihood of success on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). An inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the contentions and the evidence before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing the unpatentability of at least one challenged claim of the ’138 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’138 patent on all grounds set forth in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Patent Owner’s contentions are misplaced. It is an oversimplification to say that if the expert testimony is the same as statements in the Petition, then the testimony should be accorded no weight. The issue is not whether the two are the same or nearly identical. Rather, the issue is whether the testimony refers to supporting evidence or contains technical reasoning. See Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15–17 (PTAB Aug. 24, 2022) (precedential) (according “little weight” to declaration testimony that contains a verbatim restatement of a petition’s conclusory assertions without additional supporting evidence or reasoning). This is consistent with 37 C.F.R. § 42.65(a), which states: “Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” We do not accord expert testimony little or no weight simply because it is verbatim to what Petitioner states in the Petition. Patent Owner has not even attempted to show that Dr. McDaniel’s testimony is without citation to underlying evidence and lacks technical reasoning. Further, Dr. McDaniel’s testimony regarding motivation to combine the teachings of Kesanupalli and Brown includes numerous other paragraphs, e.g., paragraphs 75–79, and Dr. McDaniel also has testified to the technical content of Kesanupalli, e.g., paragraphs 65–70. All of that testimony should be read together in determining whether Dr. McDaniel’s testimony regarding combining the teachings of Kesanupalli and Brown is wholly conclusory, i.e., without any evidentiary support or technical reasoning. Patent Owner has not shown that it is. Thus, Patent Owner’s argument that Dr. McDaniel’s testimony should be accorded no weight as to the reasonable expectation of success analysis lacks merit. We decline to accord Dr. McDaniel’s testimony no weight. E.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a bachelor’s degree in [] electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of authentication techniques, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa.” Pet. 6 (citing Ex. 1003 ¶¶ 18–21). At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art, except for the qualifier “at least” which would make the stated scope without an upper bound and thus potentially cover the level of skill of an expert. It is supported by the testimony of Dr. McDaniel (Ex. 1003 ¶¶ 18–21) and not disputed by Patent Owner (Prelim. Resp. 10–11). Further, it appears consistent with what is reflected by the content of the applied prior art. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Each independent claim recites generally “a processor;” and the ’138 patent states “[a]s used herein, the term ‘processor’ refers to one or more devices, circuits, and/or processing cores configured to process data, such as computer program instructions.” APPL-1001, 2:21–23. POSITA would understand that the plain and ordinary meaning of the term “processor” may include “one or more devices, circuits, and/or processing cores,” which includes a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor. APPL-1003, ¶56. Pet. 7. Patent Owner has not proposed a construction for “processor” and states that “it does not address these positions [of Petitioner]” because its Response “does not depend on these definitions.” Prelim. Resp. 11. Based on the description in the specification of the ’138 patent, as cited by Petitioner, we determine, preliminarily, that a “processor,” in the context of the ’138 patent, may include a plurality of separate devices, circuits, and/or processing cores functioning together to provide a processor.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,514,138 - Apple Inc. v. Carbyne Biometrics, LLCInstitutedPTAB · Jul 16, 2024 · IPR2024-00332 · APJ Arthur M Peslak · IPR · Institution
The Board instituted review of claims 1–6, 10–16, 20, and 21 because Apple showed a reasonable likelihood that at least one claim would have been obvious over Kesanupalli, Challener, and Cheng.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionary denials in AIA post-grant proceedings with parallel district court litigation. See Ex. 1025, Memorandum to Members of the PTAB from Director Vidal, dated June 21, 2022 (“Memorandum”). In the Memorandum, the Director states that “[w]hen 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, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Further, when such a stipulation is provided, “the grounds the PTAB resolves will differ from those present in the parallel district court litigation” and “the PTAB will not discretionarily deny institution of an IPR.” Id. In this case, Petitioner provides a stipulation that falls within the contours of the Memorandum. Ex. 1029, 1. Petitioner’s stipulation meets the requirements of a stipulation pursuant to Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to § II.A), and, therefore, the Director’s Memorandum governs our determination here. For the foregoing reasons, in accordance with the Director’s Memorandum, we do not exercise our discretion to deny institution under 35 U.S.C. § 314(a) due to the parallel district court litigation.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Because neither the same nor substantially the same art or arguments were made to the Office during prosecution of the ’512 patent or in the 251 IPR, we determine that the first prong of the Advanced Bionics framework is not satisfied. Since the first prong of the Advanced Bionics framework is not satisfied, we need not reach the second prong of the Advanced Bionics framework. Accordingly, we decline to exercise our discretion to deny institution under § 325(d).” slip op. at 16
- 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(a). See 37 C.F.R § 42.4(a) (2023) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review 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.” Considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in its challenge of at least one claim of the ’512 patent as unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’512 patent on the ground stated in the Petition.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“(PTAB Aug. 24, 2022) (precedential), the Board accorded “little weight” to declaration testimony that contains a verbatim restatement of a petition’s arguments without additional supporting evidence or reasoning. In Xerox, the Board held that the critical inquiry is whether a declaration is conclusory and unsupported and whether it discloses underlying facts or data on which the opinion is based. Xerox, Paper 9 at 15 (quoting 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”)); see also RightQuestion, Paper 17 at 23 (“Petitioner’s declarant makes these same statements verbatim, without more, and with no additional citations to evidence.”). Patent Owner ignores Dr. McDaniel’s testimony summarizing the relevant disclosures from Kesanupalli, Challener, and Cheng. Ex. 1003 ¶¶ 61–73. Patent Owner also ignores Dr. McDaniel’s testimony of the specific basis for his opinion that a person of ordinary skill in the art would have been motivated to combine Kesanupalli and Challener with a reasonable expectation of success. Ex. 1003 ¶¶ 74–80. This testimony contains specific detailed citations to the references in support of Dr. McDaniel’s opinions. We, thus, find that Dr. McDaniel’s testimony, taken as a whole, in support of the Petition is supported sufficiently at this stage of the proceeding. Consequently, we do not give his testimony little to no weight because portions of it are repeated in the Petition.” slip op. at 44
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,929,512
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.