- PTAB · Nov 21, 2024 · IPR2024-00914 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–10, 12, and 14–30 on all grounds, finding a reasonable likelihood of prevailing on the Pelio and Chapel obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that 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.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’456 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, electrical engineering, mechanical engineering, or an equivalent, and two years of professional experience relating to green datacenters, or more particularly, the use of renewable energy in powering datacenters and power management techniques for datacenters.” Pet. 14 (citing Ex. 1003 ¶¶ 20–22).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts “for the purposes of this proceeding and the grounds presented herein, no claim term requires express construction.” Pet. 14. For purposes of this Decision, we agree with Petitioner and determine that no claim term requires express interpretation at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (per curiam) (claim terms need to be construed “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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“sources, wherein such power distribution units were “a well-known aspect of datacenter design” (id. at 22–23 (citing Ex. 1005 ¶¶ 2, 19, 51, 79, 99; Ex. 1006 ¶¶ 27, 82; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1015, 3, 4; Ex. 1003 ¶¶ 61–62)); (4) “Pelio recognizes the variability of renewable sources resulting in times where there is insufficient power for computing operations,” and Chapel addresses that problem by teaching “monitoring and controlling power delivery to manage electrical power distribution within a datacenter based on the available power supply” (id. at 23 (citing Ex. 1005 ¶¶ 2, 37, 70, 106; Ex. 1006 ¶¶ 2, 47, 80–83, 90; Ex. 1003 ¶¶ 63–64)); (5) the ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of Pelio and Chapel because their teachings are “compatible” and combining them “would have been predictable” and within the skillset of the ordinarily skilled artisan as it was “already known” in the art to collocate datacenters with “renewable generators” and to control a datacenter’s load “in response to a renewable source’s varying power supply” (id. at 24–25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1007, 1, 4; Ex. 1013, 7; Ex. 1014, 6; Ex. 1015, 3, 4; Ex. 1016, 2; Ex. 1003 ¶ 65)); and (6) the Pelio-Chapel combination “would predictably result in Pelio’s datacenter containers including Chapel’s teachings for controlling power delivered to servers,” which “would advantageously enable Pelio’s datacenters to better follow the power supply and avoid grid electricity costs when the renewable supply cyclically dwindles,” thus combining “known elements” according to “known methods” to achieve “predictable results” (id. at 25 (citing Ex. 1005, Abs., ¶¶ 2, 33, 37, 50, 106; Ex. 1006 ¶¶ 2, 47, 80–83; Ex. 1003 ¶¶ 68–69)).” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,456 - PTAB · Oct 9, 2024 · IPR2024-00719 · APJ Elizabeth M Roesel · IPR · Institution
Instituted inter partes review of claims 1–64 based on the reasonable likelihood that the Nowka–Borkar combination renders the independent claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). “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) (quoting Vivid Techs., Inc. v. Am. Sci. Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that it is not necessary to provide an express construction for any claim term for purposes of deciding whether to institute review.” slip op. at 10
- Skill levelSkill level board ownOther
“Level of Ordinary Skill in the Art At this stage of the proceeding, there is no dispute about the level of ordinary skill in the art. Based on the testimony of Petitioner’s declarant, we determine that a person of ordinary skill in the art (“POSITA”) would have had a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Ex. 1003 ¶ 21. We find that the level of ordinary skill in the art, as articulated above, is consistent with the level of technical understanding and competence reflected in the ’885 Patent Specification and the asserted prior art references.” slip op. at 9
- Obviousness (§103) › Analogous artAnalogous artInstituted
“A prior art reference is analogous and thus can be used in an obviousness combination if it ‘is from the same field of endeavor, regardless of the problem addressed’ or ‘is reasonably pertinent to the particular problem with which the inventor is involved,’ even if it is not within the inventor’s field of endeavor.” Tinnus Enterprises, LLC v. Telebrands Corp., 846 F.3d 1190, 1207 (Fed. Cir. 2017) (citing Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1000–01 (Fed. Cir. 2016); In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992)). Here, the parties agree that the ’885 Patent’s field of endeavor is managing power on integrated circuits using power islands. Pet. 2; Prelim. Resp. 3–4 (citing Ex. 1001, 1:23–25). We agree with Petitioner that Borkar’s field of endeavor is power management of integrated circuits on a chip. Pet. 13; Ex. 1006, code (57), 1:8–18, 2:49–57. We also agree with Petitioner that Borkar’s power management solution involves “using distinct units on an integrated circuit whose power can be independently controlled,” i.e., “domains” in Borkar’s terminology and “power islands” in the terminology of the ’885 patent. Pet. 14–15, 25–27, 62; Ex. 1001, 3:59–62; Ex. 1006, 9:48–64, 10:30–42, 12:62–13:30, Figs. 5, 7. Patent Owner asserts that Borkar focuses on transistor body bias. Prelim. Resp. 5. In our view, however, Patent Owner’s characterization of Borkar’s field of endeavor is overly narrow. See Unwired Planet, 841 F.3d at 1001 (“The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.”). If Patent Owner raises a nonanalogous art argument at trial, then based upon the present record, it appears likely that Petitioner will succeed in arguing that Borkar is from the same field of endeavor as the ’885 Patent. In view of this preliminary finding, we do not need to consider whether Borkar is reasonably pertinent to the particular problem addressed by the ’885 Patent. See In re Asset Guard Prod., Inc., No. 2021-1902, 2022 WL 1097363, at *3 (Fed. Cir. Apr. 13, 2022) (A determination that a prior art reference is from the same field of endeavor as the challenged patent “is a slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,945,885 - PTAB · Sep 27, 2024 · IPR2024-00600 · APJ John F Horvath · IPR · Institution
Instituted IPR on claims 1–18 over all grounds raised, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“On the record before us, we construe “power island” to mean “any section, delineation, partition, or division of an integrated circuit where power consumption is controlled within the section, delineation, partition, or division,” which is the express definition provided in the Specification. Ex. 1001, 3:65–4:1; see also Philips, 415 F.3d at 1316 (“[T]he specification may reveal a special definition given to a claim term by the patentee. . . . In such cases, the inventor’s lexicography governs.”). Our construction is consistent with claim 1, considered as a whole, which does not require a power island to be “independently” controlled. See Ex. 1001, 13:10–21. Instead, it requires a power manager “to dynamically change power consumptions of the plurality of power islands.” Id. at 13:10–16. That is, it allows a single power manager to control a plurality of power islands. See KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (“This court has repeatedly emphasized that an” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time of the invention as someone that “would have had at least a bachelor of science degree in electrical or computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components, or software for controlling electronic circuits or components, or equivalent, with additional education substituting for experience and vice-versa.” Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner does not dispute this definition; nor does Patent Owner offer an alternative definition. Prelim. Resp. 1–63. “[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). At this stage of the proceeding, we find Petitioner’s assessment of the level of skill in the art to be reasonable and commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Accordingly, for purposes of this Decision, we adopt Petitioner’s description as our own.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Upon consideration of the Petition and Preliminary Response, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one challenged claim of the ’077 patent. Accordingly, we institute inter partes review of all challenged claims on all grounds raised.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner further contends that a POSITA would have found it obvious to modify device 200 in Takahashi’s Figure 16 to include multiple power islands coupled to multiple sleep circuits based on Takahashi’s Figure 10 embodiment, which illustrates transistors 310–380 (sleep circuits) controlling the power consumption of functional circuits 210–280 (power islands). Id. at 27–28 (citing Ex. 1004, ¶¶ 90, 91, 94, Fig. 10; Ex. 1003 ¶¶ 123–125).6 Petitioner contends a POSITA would have “found it obvious to incorporate such additional power islands” in device 200 shown in Figure 16 in order to “provide additional functionality (e.g. memory) and control power consumption in additional power islands using the ‘voltage regulator 10’ and additional ‘switching circuits.’” Id. at 13 (citing Ex. 1003 ¶¶ 92– 95). At this stage of the proceeding, we determine Petitioner has set forth an adequate reason to combine. See, e.g., KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[t]he combination of familiar elements according to known methods is likely to be obvious when it does not more than yield predictable results.”).” slip op. at 15
Claim construction§ 103 obviousnesscites MarkmanPatents in suitUS 8,854,077 - PTAB · Sep 26, 2024 · IPR2024-00598 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted inter partes review of claims 1–51, finding a reasonable likelihood that claims 1, 16, and 37 are obvious over Nowka.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, we determine that the reasonable likelihood standard is met, and we institute inter partes review.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“After considering the parties’ arguments and evidence, we do not adopt Patent Owner’s proposed construction. We see no support in the ’306 Patent for limiting “needs and operation,” as recited in the claims, to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. Our analysis begins with the claims themselves. Claim 1 recites “determining a target power level for one of the power islands based on needs and operation of the integrated circuit.” Ex. 1001, 13:36–38. Claims 16 and 37 contain similar language. Id. at 14:25–27, 15:25–27. We see no support in the claim language for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction. We next turn to the Specification, where the phrase, “needs and operation of the integrated circuit” appears twice. First, when describing prior integrated circuits, the ’306 Patent states that “[t]he voltages and the frequencies do not dynamically change based on the needs and operation of the integrated circuit.” Ex. 1001, 2:14–16. Second, when describing an embodiment, the ’306 Patent discloses, “The power manager . . . can dynamically change the power consumption of the power islands . . . based on the needs and operation of the integrated circuit . . . . The target power level is a desired, calculated, or specified power consumption of the power islands.” Id. at 4:28–33. We see no support in these passages for limiting “needs and operation” to “future operational needs and current operating status,” as in Patent Owner’s proposed construction.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter, as a whole, would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved based on underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) when presented, objective evidence of nonobviousness, i.e., secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness inquiry typically requires an analysis of “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”)). Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements,” but “must instead articulate specific reasoning, based on evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,051,306 - PTAB · Sep 25, 2024 · IPR2024-00599 · APJ Ken B Barrett · IPR · Institution
Instituted IPR of claims 1–11, 23, 24, and 31–35 on all asserted grounds after 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
“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) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’563 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’563 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Other 314aDenied
“II. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Patent Owner asserts that we should discretionarily deny institution under 35 U.S.C. §314(a), arguing that “the Petition here presents excessive grounds of questionable merit.” Prelim. Resp. 62 (citing Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 at 10–11 (Nov. 7, 2018) (informative); Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 at 41–43 (Jan. 24, 2019) (informative); see also Prelim. Resp. 63 (Patent Owner arguing that “[c]ompounding this problem is the Petition’s improper incorporation by reference of large sections of the Min Declaration and the nearly verbatim language shared between the two.”). In Chevon Oronite and Deeper, the petitioners had demonstrated a likelihood of prevailing only as to two claims out of several challenged, and the Board determined that instituting a trial would not be an efficient use of the Board’s time and resources. See Chevron Oronite, IPR2018-00923, Paper 9 at 10–11 (“Petitioner demonstrates, at most, a reasonable likelihood of prevailing with respect to two dependent claims out of a total of twenty challenged claims.”); Deeper, UAB, IPR2018-01310, Paper 7 at 43 (“On this record, and based on the particular facts of this proceeding, instituting a trial with respect to all twenty-three claims and on all four grounds based on evidence and arguments directed to only two claims and one ground would not be an efficient use of the Board’s time and resources.”). In contrast, we, for the reasons discussed below, determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to all of the challenged claims. We decline to exercise discretion to deny institution under § 314(a) for the reasons argued by Patent Owner.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: A person of ordinary skill in the art (“POSITA”) would have had at least a bachelor of science degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, or testing of electronic circuits or components or software for controlling electronic circuits or components, or the equivalent, with additional education substituting for experience and vice versa. Pet. 5–6 (citing Ex. 1003 ¶ 24). Patent Owner asserts, without citation: [F]or the purposes of this proceeding, a POSITA would have at least [a] bachelors of science degree in electrical engineering or computer engineering and at least two years of clock network design and/or power management design for processors or large system-on-chip (“SoC”) integrated circuits (“ICs”). Prelim. Resp. 4–5. Both parties contend that the ordinary artisan would have had two years of experience, with Patent Owner’s proposal in that regard being somewhat more specific than Petitioner’s. However, we do not see any meaningful distinction between the parties’ definitions of the person of ordinary skill in the art. For purposes of this decision, we apply Petitioner’s definition, which is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). We note, however, that were we to apply Patent Owner’s definition, the outcome of this decision would be the same.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for patent owner
“To the extent that Patent Owner argues for a construction narrowing the meaning of “appropriate frequency” beyond that adopted by the District Court, we decline to adopt a narrower construction at this time. We also note that some of the concepts mentioned by Patent Owner are not consistent with the language of the District Court’s construction or, for example, method claim 1.5 For example, the reference to fluctuations in voltage implies multiple voltage readings; however, the method of claim 1 calls for the step of “sensing a delivered voltage,” which need only be performed once. See Ex. 1001, 7:22–23; see also id. at 7:28–30 (dependent claim 2 further limiting claim 1 by requiring the “sensing . . . [to be] continuously repeated during the integrated circuit's operation.”). Also, Patent Owner’s and the District Court’s construction contains the phrase, “at or below a maximum frequency possible.” Limiting the “appropriate frequency” to the optimal or to the “highest possible” frequency seemingly would be at odds with this broad range of possible frequencies. See Ex. 1001, 7:31–33 (dependent claim 3 further limiting the “appropriate frequency” of claim 1 to “a maximum frequency possible for the portion of the integrated circuit at the delivered voltage”). The District Court’s claim construction order states that “Defendants cite testimony of Plaintiff’s expert that the scope of ‘appropriate frequency’ encompasses everything from the maximum possible frequency all the way down to a frequency at which the circuit ceases to operate.” Ex. 2009, 14. That testimony, if applicable to the District Court’s construction (and it appears that it is), suggests that the claims encompass the presumably non-optimal” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,224,563 - PTAB · Aug 27, 2024 · IPR2024-00388 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Other 314aDenied
“reexamination of the ’243 Patent on December 12, 2023,” and argues that, “[i]n view of the finite resources of the Board and the co-pending ex parte reexamination, the Director should deny the Petition under 35 U.S.C[.] § 315(d).”4 Prelim. Resp. 41–42; see id. at 41 (Patent Owner emphasizing the word “termination” in § 315(d)). Patent Owner’s argument about the finite resources of the Board suggests that the Board is conducting the reexamination proceeding. See Prelim. Resp. 46 (Patent Owner referring to “the Board’s reasons for granting the ex parte reexamination,” and asserting that “the Board has made substantive statements about the prior art in the ex parte reexamination by issuing a non-final office action . . . [and, i]n a non-final office action, the Board issued two grounds of rejection.”). The reexamination, however, is being conducted by the Central Reexamination Unit, not by the Board. Thus, the Board’s resources are not being utilized in the reexamination. We determine that, given the circumstance that are present here, discretionary denial of the Petition due to the Board’s resources is not warranted.” slip op. at 6
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“In General Plastic, the Board considered several factors in determining whether to exercise discretion under § 314(a) to deny institution when a party files multiple or “follow-on” petitions challenging the same patent as a previous petition. See General Plastic, Paper 19 at 15–16; see also id. at 17 (“Multiple, staggered petitions challenging the same patent and same claims raise the potential for abuse.” (emphasis added)). Here, it is our understanding that there has been no prior petition challenging the ’243 patent at the Board. The parties do not direct us to any authority extending the application of General Plastic to a situation, such as here, where a reexamination request was filed before a petition. Cf., e.g., Geneoscopy, Inc. v. Exact Sciences Corp., IPR2024-00459, Paper 9 at 32 (PTAB July 26, 2024) (“Given the facts and circumstances of this case, we are not inclined to extend the holding of General Plastic to Petitioner’s prior ex parte reexamination request.”); Dish Network LLC v. Entropic Commc’ns, LLC, IPR2024-00373, Paper 9 at 10 (PTAB July 26, 2024) (“The parties point to no authority to support that General Plastic has ever been applied in the context of a reexamination filed before a petition similar to the facts of this case. We decline to consider further discretionary denial under General Plastic under the facts presented here.”); Samsung Elecs. Co., Ltd. v. Netlist, Inc., IPR2022-00615, Paper 20 at 21 (PTAB Oct. 19, 2022) (“Patent Owner points to no authority that General Plastic has ever been applied to deny institution of a petition based on a prior reexamination. We decline to extend General Plastic to discretionarily deny the Petition on this basis.”); Toshiba Memory Corp. v. Anza Tech., Inc., IPR2018-01597, Paper 12 at 45 (PTAB Mar. 12, 2019) (“To the extent that Anza [asks us] to deny institution based on prior reexaminations, it is not explained sufficiently why the rationale of General Plastic extends to such situations. We decline to do so for the first time in this case.” (footnote omitted)). We decline to extend General Plastic to the circumstances in this case. As such, we decline to exercise discretion to deny the Petition under § 314(a) and General Plastic.5 IV.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits. H. Conclusion Regarding the Fintiv Factors We consider “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. We determine that the facts weighing against exercising discretion to deny institution collectively outweigh those facts weighing in favor of exercising discretion. Thus, we decline to deny institution based on the Fintiv factors.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. CONCLUSION Petitioner has demonstrated a reasonable likelihood of prevailing in showing the unpatentability of at least one of the challenged claims of the ’243 patent. Accordingly, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc., 138 S. Ct. at 1354, 1359–60; 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of any of the challenged claims. VII. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–20 of the ’243 patent is instituted with respect to all grounds of unpatentability set forth in the Petition; and” slip op. at 52
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,291,243 - PTAB · Aug 9, 2024 · IPR2024-00385 · APJ Michael L Woods · IPR · Institution
The Board instituted inter partes review of claims 1–4, 6, and 7 on all asserted grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). The Board evaluates discretionary denial under § 325(d) using a two-part framework: first, the Board considers whether the same or substantially the same art or arguments were previously presented to the Office; and if so, second, the Board considers whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). In determining whether the same or substantially the same art or arguments were previously presented to the Office, the Board considers the following nonexclusive factors: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; and (3) the extent of the overlap between the arguments” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the PO Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’332 patent. Accordingly, we institute an inter partes review of claims 1–4, 6, and 7 of the ’332 patent on the grounds asserted in the Petition.” slip op. at 2
- Skill levelSkill level board ownOther
“A person of ordinary skill in the art (POSITA) would have had: (i) a B.S. degree in Chemical Engineering, Petroleum Engineering, or an equivalent field and (ii) two or three years of academic or industry experience in chemical processing systems, oil and gas production and/or refining; or comparable experience. Additional work experience can substitute for educational or research experience, and vice versa. Pet. 8 (citing Ex. 1002 ¶¶ 26–29); see also Prelim. Resp. 16 (agreeing with Petitioner’s proposed definition of a POSITA). For purposes of this Decision, we adopt the parties’ assessment of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage of the proceeding, we decline to adopt Patent Owner’s interpretation that cryogenic conditions occur only below 50°F. See Prelim. Resp. 19 (citing Ex. 2001 ¶ 55). For purposes of this Decision, we need not and do not formally determine the temperature at which cryogenic conditions occur, as our construction would not affect our decision to institute. 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)). We agree with Petitioner that “[e]xplicit construction of terms is unnecessary because it is not dispositive—the art teaches the claims under any reasonable construction.” Pet. 8 (citing Vivid Techs., 200 F.3d at 803). As explained below, for purposes of institution, Petitioner has shown a reasonable likelihood that Aycaguer does not disclose subjecting the recited streams to “cryogenic conditions” at any temperature, as recited in Limitation 1.6. See Pet. 34–36; see also infra § IV.D.2.g.” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,505,332 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Aug 9, 2024 · IPR2024-00460 · APJ Josiah C Cocks · IPR · Institution
The Board instituted IPR on claims 1–21 on all petition grounds, finding a reasonable likelihood that claims 1–8 and 12–18 are anticipated by Nishida.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the reasons set forth above, we conclude that Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. At this stage of the proceeding, the Board has not made a final determination on the construction of any claim term or the patentability of any challenged claim V. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–21 of the ’749 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“arguments that Nishida-US does not disclose the “simultaneously knitting” limitation of the claims of the ’749 patent constitutes “error.” Pet. 86. In our view, whether error or not, there is clear inconsistency on the record before us as to assessment of Nishida’s and Nishida-US’s teachings pertaining to the pertinent “simultaneously knitting” requirement. In that regard, as discussed above, in accounting for that requirement, the Petition unambiguously relies on disclosure in Nishida specifically stating that “when the strip of material (1) is manufactured, the patterns (2) of the uppers are produced, at the same time as the strip of material.” Pet. 25 (citing Ex. 1005, Abstract (emphasis added by Petitioner)). At the very least, there is a reasonable case to be made that such disclosure conveys that the material (1) and the patterns (2) are created simultaneously. The record is devoid of any indication that the Examiner considered or apprehended the extent of that disclosure.15 “[M]isapprehending or overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims,” as seemingly occurred here, does not lend itself to a conclusion that the exercise of discretion to deny institution is appropriate. See Advanced Bionics, IPR2019-01469, Paper 6 at 8–9 n.9.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“account for limitation 1[a], on this record, is difficult to follow. Nishida makes clear that its shoe making method involves production of material web 1 by knitting and which is “provided with a single or a plurality of unwound web part(s) 2.” Ex. 1005, 5. Nishida’s disclosure also, at this time, appears unequivocal in describing that “patterns (2)” and web material 1 (or “strip of material (1)”) are manufactured or produced “at the same time.” Id. at code (57) (Abstract). Nishida also unambiguously describes its material web 1 as including “surface areas 1.1.” Id. at 7. As is evident from, for instance, Nishida’s Figure 2, surface areas 1.1 surround unwound web parts (or patterns) 2.” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“2. Proposed Ground of Obviousness Based on Nishida (Grounds 2 and 6) Petitioner contends that claims 9, 10, 19, and 20 would have been obvious to a person of ordinary skill in the art based on Nishida’s teachings taken with the general knowledge of a skilled artisan. Pet. 50–54. Petitioner supports its contention with citation to Dr. Brookstein’s testimony (Ex. 1003) as well as various record exhibits (e.g., Exs. 109, 1010, 1012, 1023). Id. Patent Owner does not challenge Petitioner recourse to a person of ordinary skill in the art’s general knowledge in accounting for claims 9, 10, 19, and 20. Rather, Patent Owner simply contends that the arguments it advanced in connection with Ground 1 also applies to Ground 2. As discussed above, at this time, we do not agree with Patent Owner’s arguments. Petitioner also contends that claims 11 and 21 would have been unpatentable over Nishida and Zuckerman (Ground 6). Pet. 81–84. Patent Owner also contends that the arguments it advances in conjunction with Ground 1 apply to Ground 6. Prelim. Resp. 37. We do not find those arguments availing. On the record before us, we determine that Petitioner has shown a reasonable likelihood of success in its patentability challenge to claims 9, 10, 19, and 20 based on Nishida (ground 2), and its challenge to claims 11 and 21 based on Nishida and Zuckerman (ground 6).” slip op. at 19
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,266,749 - PTAB · Aug 7, 2024 · IPR2024-00387 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–20 on every asserted ground, finding a reasonable likelihood that Keith anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“may bear on the decision to exercise discretion to deny, such as the merits of the patentability challenges. Fintiv, Paper 11 at 14–16. The parties’ arguments for this factor concern only whether the Petition made a showing of unpatentability by compelling merits. See Pet. 104; Prelim. Resp. 47–48; Prelim. Reply 2; Prelim. Sur-reply 2–3. Board precedent provides that we should only consider the compelling merits issue if the first five Fintiv factors favor discretionary denial. CommScope Techs. LLC. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (Vidal February 27, 2023) (precedential). “Thus, in circumstances where the Board determines that the other Fintiv factors 1–5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” Id. As discussed above, the first three Fintiv factors weigh against discretionary denial, the fourth factor is either neutral or weighs slightly against denial, and only the fifth factor favors denial. Considering these factors as a whole, we determine that the first five Fintiv factors collectively weigh against discretionary denial, and thus, we do not assess compelling merits.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons discussed below, we determine that the Petition does demonstrate a reasonable likelihood of prevailing on its challenge to, at least, the independent claims as anticipated by Keith. Therefore, we institute an inter partes review on all challenged claims on all asserted grounds. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(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 7 It is not clear whether Petitioner’s use of the word “combination” is referring to the combination of the reference’s teachings (the important aspect for an obviousness analysis) or is referring colloquially to the “combination” of limitations that constitute the overall claimed subject matter. See, e.g., Prelim. Reply 3. unpatentability asserted for each claim.”). During trial, the parties will have the opportunity to further discuss their respective positions on this single-reference obviousness challenge based on Kimura and on the grounds that build on that challenge.” slip op. at 24
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that it applies the plain and ordinary meanings to all terms, and contends that “[n]o express constructions are required in this proceeding.” Pet. 6. “For purposes of this Preliminary Response, Patent Owner states that no express construction is necessary at this stage.” Prelim. Resp. 9. We agree with the parties, and determine that, on this record and for purposes of this decision, no claim terms require express construction. We, however, discuss here some claim construction issues in order to narrow and clarify the issues going forward.” slip op. at 18
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“including “energy transaction execution engine,” should be construed as having the plain and ordinary meaning. See Pet. 6. Petitioner contends that phrase is not a means-plus-function element governed by 35 USC § 112, sixth paragraph. See Pet. 14 n.4. However, in applying the claims to prior art references, Petitioner offers alternative arguments in the event that the phrase is construed as a means-plus-function element. See Pet. 14 n.4 (“The energy transaction execution engine does not appear to be in means-plus-function format, but, due to 37 C.F.R. § 42.104(b)(3), Petitioner cautiously notes that corresponding structure [in Kimura] would be energy transaction execution engine 316 and any implementing algorithm.”); id. at 65 n.10 (“If this is in means-plus function format . . . , Keith at least discloses an equivalent.”). Patent Owner does not argue that “an energy transaction execution engine” is a means-plus-function element. See Prelim. Resp. 19 n.4 (“For the purposes of this Preliminary Response, Patent Owner is solely addressing Petitioner’s hypothetical means-plus-function argument, and does not currently take a position on whether the ‘energy transaction execution engine’ constitutes a means-plus-function claim.”). Therefore, neither party contends that “energy transaction execution engine” is a means-plus-function element, and neither party asks us to construe the phrase that way. We do not reach Petitioner’s alternative construction and, at this preliminary stage and in light of the parties’ positions, we decline to construe “energy transaction execution engine” as a means-plus-function element governed by § 112, sixth paragraph. See, e.g., Phillips, 415 F.3d at 1311 (“[W]e have held that the absence of that term [‘means’] creates a rebuttable presumption that section 112, paragraph 6, does not apply.”).” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,103,391 - PTAB · Jun 14, 2024 · IPR2024-00461 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 on all petitioned grounds and granted Nokia’s motion to join IPR2023-00978 as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Patent Owner argues that we should discretionarily deny the Petition because “[t]he Board and the Federal Circuit have already conducted inter partes review of Claims 28 and 29 of the ’931 Patent based on the Vornefeld reference and confirmed the patentability of the claims,” and, “while Nokia now cites additional prior art references, those new references add nothing of significance to Vornefeld and the other prior art references previously considered by the Board and the Federal Circuit.” Prelim. Resp. 45.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“could find that Nokia is or was an indemnitor to Sprint, Patent Owner is left with the allegation that Nokia and Sprint have a pertinent relationship with each other because current Petitioner Nokia was a supplier of prior petitioner Sprint at the time of the Sprint IPR and Sprint Litigation. See Prelim. Resp. 54–55. Patent Owner does not direct our attention to any evidence indicating the substance of that relationship. See id. Without more, we cannot discern whether there was a standard customer-manufacturer relationship or whether there was, as Patent Owner alleges, a “significant relationship.” Prelim. Resp. 55. We determine, on the record in this case, that the mere existence of a supplier-customer relationship does not tend to show that Nokia is a real party in interest or privy of Sprint as argued by Patent Owner. See, e.g., WesternGeco LLC, 889 F.3d at 1321 (“a contractual and fairly standard customer-manufacturer relationship regarding the accused product” does not necessarily establish privity); Wi-Fi One, LLC, 887 F.3d at 1340–41 (affirming the Board’s determination that there was an inadequate showing of privity or of a real party in interest relationship even though the “evidence showed that Broadcom’s interests as to the issue of infringement were generally aligned with those of its customers”).” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). For the reasons that follow, we institute an inter partes review as to both of the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition. We also grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“entitled to the requested relief. 37 C.F.R. § 42.20(c). In deciding whether to join a case, we consider: (1) the reasons why joinder is appropriate, (2) whether the petition raises any new grounds of unpatentability, (3) any impact that joinder would have on the cost and trial schedule for the existing review, and (4) whether joinder will add to the complexity of briefing or discovery. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15, 4 (PTAB Apr. 24, 2013); Trial Practice Guide9 at 76. Petitioner contends that “joinder with the Verizon IPR is appropriate because Nokia’s Petition includes identical arguments and the same grounds raised in the existing Verizon IPR proceeding (i.e., challenges the same claims of the same patent, relies on the same expert declaration, and is based on the same grounds and combinations of prior art submitted in the Verizon Petition).” Mot. 5. According to Petitioner, “good cause exists for joining Nokia to the Verizon IPR proceeding so that the Board can efficiently ‘secure the just, speedy, and inexpensive resolution’ of Nokia’s and Verizon’s petitions in a single proceeding.” Id. (quoting 37 C.F.R. § 42.1(b)). Petitioner also represents that it will act as an “understudy,” and that it “agrees to adhere to all applicable deadlines set forth in the Verizon IPR Scheduling Order,” and contends that, accordingly, the trial schedule should not be adversely impacted by the joinder. Id. at 2, 6. Petitioner further asserts that, because no new issues are being introduced by the requested joinder, “Patent Owner will . . . not be required to provide any additional analysis or arguments beyond what it will already provide in” slip op. at 24
Discretionary denialPatents in suitUS 7,230,931
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.