- PTAB · Jan 9, 2024 · IPR2023-01128 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1, 2, and 5–28 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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) (2018). Upon consideration of the Petition, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 97. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, and 5–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 2, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. Subsequently, in September 2023, Petitioner filed an Unopposed Motion to Withdraw the Motion for Joinder, stating that “in view of the Board’s Termination Order in the Amazon IPR, Petitioner should be permitted to withdraw its Joinder Motion.” Paper 9, 2. Based on the foregoing, we grant Petitioner’s Unopposed Motion to Withdraw the Motion for Joinder, as the underlying Motion for Joinder is moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6–7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“that filter,” based on the ’611 patent Specification’s disclosure that β(z) “describes the relationship between O and calibrated O for speech.” Prelim. Resp. 11; Prelim. Sur-Reply 1; Ex. 1001, 5:31–32. We agree with Patent Owner that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Jan 9, 2024 · IPR2023-01117 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 14–42 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been shown obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’213 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00276 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00276, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition. Prelim. Resp. 14 (citing Ex. 2002 ¶ 26). Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art. Our decision would not have changed had we adopted Patent Owner’s proposal.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed petitioner constructionDecided for petitioner
“At this stage, we determine that Patent Owner’s proposed construction improperly imports an embodiment from the specification. “While we read claims in view of the specification . . . we do not read limitations from the embodiments in the specification into the claims.” Hill-Rom Servs. Inc. v. Stryker Corp., 755 F. 3d 1367, 1371 (Fed. Cir. 2014). “We depart from the plain and ordinary meaning of claim terms based on the specification in only two instances: lexicography and disavowal.” Id. “The standards for finding lexicography and disavowal are exacting. To act as its own lexicographer, a patentee must clearly set forth a definition of the disputed claim term other than its plain and ordinary meaning and must clearly express an intent to redefine the term.” Id. (internal quotation omitted). On this record, there is no such clear definition in the specification, express or implied. The disclosed filter β(z) “describes the relationship between O1 and calibrated O2 for speech.” Ex. 1001, 5:31–32. But the filter β(z) is merely a disclosed embodiment and does not define the claimed “filter that describes a relationship for speech.” See id. Patent Owner also points to no disclosure that disavows interpretations other than the example filter β(z). Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). We decline Patent Owner’s invitation to limit the claims to unclaimed features. Patent Owner separately asserts that claim 17’s recitation of “applying a delay to the first intermediate signal” clarifies that a POSITA would not interpret claim 14’s filter to include a delay. Prelim. Resp. 16. Patent Owner argues that “[a] POSITA would know that applying two delays in succession is equivalent to applying a single delay for the sum of those two delays. Thus, a POSITA would realize that the filter cannot be a delay filter[.]” Prelim. Resp. 16 (Ex. 2002 ¶ 62). At this stage, we disagree. Claim 17 merely requires a delay to be applied to a first intermediate signal. To the extent Patent Owner argues that a POSITA would not have applied two delays within a single filter, this assertion is unsupported.10 See Prelim. Resp. 16. No other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01111 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because LG did not show a reasonable likelihood that claim 1 was obvious over Avendano ’880 and Hou; the dependent-claim challenges also failed.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 33 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 33 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (“POSITA”) would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“Concurrently with the Petition, Petitioner filed a Motion for Joinder seeking joinder as a party in Amazon.com, Inc. v. Jawbone Innovations, LLC, IPR2023-00279 (“the Amazon IPR”) and consolidation with the Amazon IPR. Paper 3, 1. Patent Owner filed an Opposition to Petitioner’s Motion for Joinder. Paper 7. Petitioner filed a Reply to Patent Owner’s Opposition. Paper 8. Subsequently, the Amazon IPR terminated based on settlement. IPR2023-00279, Paper 17. We therefore dismiss Petitioner’s Motion for Joinder as moot.” slip op. at 2
§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Meta Platforms, Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Jan 9, 2024 · IPR2023-01083 · APJ Scott Raevsky · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1, 3, 5–9, 12, and 13 were obvious over Avendano ’880 and Hou.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Limitation [1b] requires, in part, “generating a first quantity by applying a calibration to at least one of the first signal and the second signal.” Petitioner’s proposed combination does not disclose this portion of limitation [1b] because Avendano ’880’s alleged calibration does not generate the first quantity. Rather, Petitioner relies on Avendano ’880’s gain to generate a calibrated second signal, which “would be subsequently processed to generate a ‘first quantity.’” Pet. 35 (emphasis added). That is, Petitioner relies on Hou’s “first minimum estimate unit 508” to subsequently process the calibrated second signal to generate the first quantity. Id. But the combination does not meet the claim because claim 1 requires the calibration to generate the first quantity: “generating a first quantity by applying a calibration,” and Petitioner relies on subsequent processing after Avendano ’880’s alleged calibration to generate the first quantity. Petitioner’s alternative argument, that “[a]s another example, a calibration also would be applied to the second signal x2 by Hou’s ‘first minimum estimate unit 508’ to generate a first quantity,” also fails. Id. at 36–37. This argument is untenable because Hou’s first minimum estimate unit 508 merely “estimates the minimum for the first electronic sound signal.” Ex. 1008, 5:36–38. Hou does not describe unit 508 as performing a calibration. Nor does Petitioner explain how Hou’s minimum estimate constitutes a calibration. Pet. 36–37. And Petitioner’s expert merely parrots the Petition. Ex. 1003 ¶ 135. Thus, Petitioner’s conclusory assertion is unpersuasive.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We determine below that Petitioner has not met its burden to show a reasonable likelihood that Avendano ’880 and Hou would have rendered independent claim 1 obvious. As the remaining claims all depend from claim 1 and Petitioner’s second challenge only addresses dependent claims, Petitioner’s failure to meet its burden on this challenge is dispositive, and we need not address Ground 2. See Pet. 1.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that we need not construe this term because, for the reasons we explain below, Petitioner has not met its institution burden regardless of the construction of this term. We further determine that no other terms require construction. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had “at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6–7 (citing Ex. 1003 ¶¶ 22–23). Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Patent Owner proposes a nearly identical definition and asserts that “Petitioner generally agrees with this level of skill in the art.” Prelim. Resp. 14 (citing Ex. 1003 ¶¶ 22–23). Based on the current record, we accept Petitioner’s description of an ordinarily skilled artisan as consistent with the ’213 patent and the asserted prior art.” slip op. at 7
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 8,321,213 - Sony Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01153 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.8 8 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 30, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties submit that no claim construction is necessary. Pet. 23; Prelim. Resp. 6. Therefore, we do not construe the claims. D.” slip op. at 14
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - LG Electronics Inc. v. Jawbone Innovations, LLCInstitution deniedPTAB · Dec 28, 2023 · IPR2023-01134 · APJ Norman H Beamer · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–20 were obvious over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentable
“We agree with Patent Owner that the record does not support Petitioner’s assertion that Brandstein teaches or suggests the independent claim requirement, “wherein the first virtual microphone and the second virtual microphone are distinct virtual directional microphones with substantially similar responses to noise.” Contrary to Petitioner’s interpretation of Brandstein Figure 5.2, that figure does not lead to an inference that the individual microphone responses have similar responses to noise. Prelim. Resp. 12–13. In effect, Petitioner is arguing that knowing that the sum of two numbers is equal to “2” necessarily means that each number is “1”, as opposed, for example, to one number being “2” and the other “0”. Moreover, as discussed above, Brandstein’s description of Figure 5.1 demonstrates that the virtual microphones of Brandstein do not have “substantially similar responses to noise.” Prelim. Resp. 9–11. Likewise, Figure 5. 3 of Brandstein also refutes Petitioner’s assertion the virtual microphone noise responses are substantially similar. Prelim. Resp. 13.7 Accordingly, we determine that the Petition does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that 7 We need not address Patent Owner’s argument that Petitioner’s reliance on different chapters of Brandstein is unjustified. independent claims 1 and 15 are unpatentable under 35 U.S.C. § 103(a) over the combination of Brandstein and Gannot.” slip op. at 24
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“On June 29, 2023, Petitioner also filed a Motion for Joinder to And Consolidation With Related Inter Partes Review IPR2023-00251, which Patent Owner opposed on July 31, 2023. Papers 3, 7. However, on August 8, 2023, that Proceeding was terminated due to settlement. IPR2023-00251, Paper 15. Accordingly, Petitioner’s motion for joinder is denied as moot.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Pet. 23–24 (citing Stern Decl. ¶¶ 27–28). Patent Owner utilizes Petitioner’s proposed level of skill in the art “[f]or the purposes of this Preliminary Response only.” Prelim. Resp. 7. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,122,357 - PTAB · Dec 21, 2023 · IPR2023-01166 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claim 11 would have been obvious over Ikeda and Puthuff.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.)” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Yet Ikeda notes that it is difficult to command the adaptive filter’s learning “depending on the situation in which the noise canceler is located.” See Ex. 1003, 3:40–54 (emphasis added). We emphasize “depending on the situation” here because it indicates that Ikeda does not necessarily criticize all outside sensors, in all situations. See id. Rather, Ikeda’s discussion of outside sensors refers to the sensors that were discussed in the background of the invention and under the specific conditions described in that section. See id. at 1:4–3:54, quoted in Prelim. Resp. 4. For example, in the part quoted by Patent Owner that allegedly teaches away, Ikeda explains that with conventional sensors “a sufficient noise canceling ability and a sufficient distortion correction characteristic are not achievable unless adequate learning sections are indicated to each adaptive filter for the learning purpose.” Id. That is, Ikeda identifies a particular type of sensor: “conventional noise cancelers.” See id.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“On this record, Petitioner’s assertions are adequately supported. Pet. 31–34. The cited part of Puthuff, for instance, explains that its system improves “immunity to false triggering due to noisy environments.” Ex. 1004, 3:19–24, 6:6–10. We credit the testimony of Dr. Richard Stern, which is consistent with this teaching. Ex. 1002 ¶ 91. At this stage, the Petition sufficiently explains how Ikeda’s and Puthuff’s systems are similar and how both are concerned with solving the same problem. See Pet. 31–36.” slip op. at 13
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091 - PTAB · Dec 21, 2023 · IPR2023-01154 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claim 11 would have been obvious over Ikeda and Puthuff; it dismissed joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we 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, Petitioner has shown a reasonable likelihood that it would prevail with respect to at least one claim challenged in the Petition, and we have not been provided a sufficient reason to exercise our discretion to deny institution. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundMotivation foundDecided for petitioner
“Yet Ikeda notes that it is difficult to command the adaptive filter’s learning “depending on the situation in which the noise canceler is located.” See Ex. 1003, 3:40–54 (emphasis added). We emphasize “depending on the situation” here because it indicates that Ikeda does not necessarily criticize all outside sensors, in all situations. See id. Rather, Ikeda’s discussion of outside sensors refers to the sensors that were discussed in the background of the invention and under the specific conditions described in that section. See id. at 1:4–3:54, quoted in Prelim. Resp. 4. For example, in the part quoted by Patent Owner that allegedly teaches away, Ikeda explains that with conventional sensors “a sufficient noise canceling ability and a sufficient distortion correction characteristic are not achievable unless adequate learning sections are indicated to each adaptive filter for the learning purpose.” Id. That is, Ikeda identifies a particular type of sensor: “conventional noise cancelers.” See id. Also, Ikeda’s “Background of the Invention” Section provides specific discussion of a conventional noise canceler, which is shown in Figure 5, reproduced below. See id. at 1:43. In Figure 5, the conventional noise canceler has a main signal microphone 1, a reference signal microphone 2, an adaptive filter 3, a subtracter 4, and an output terminal. Id. at 1:42–46. The conventional noise canceler updates the adaptive filter’s coefficient and learns the acoustic characteristic of noise in sections where the noise signal N(z) is present and the desired signal component S(z) is absent or negligibly small. Id. at 3:32–36. Ikeda teaches using this conventional sensor to detect the absence of a desired signal component. Id. at 3:32–45. In the context of discussing this sensor, Ikeda explains that “it is, in many cases, difficult to command the adaptive filters to perform learning from the outside in accordance with the level of the desired signal and that of the noise signal, depending on the situation in which the noise canceler is located.” Id. at 3:46–50. At this stage and on this record, we preliminarily determine that the cited part of Ikeda refers to the limitations of this conventional sensor—not all outside sensors, generally. according to Petitioner, Ikeda teaches multiple alternative options for detecting the absence of a desired signal component. See Pet. 21–22. For instance, Ikeda proposes using a signal-to-noise power ratio estimator. Id. (citing Ex. 1003, 4:49–56, Fig. 1; Ex. 1002 ¶ 70). Ikeda explains that, with the estimator, the noise canceler “insures rapid convergence and allows a minimum of signal distortion to occur without resorting to a command customarily input from the outside for commanding the learning operation of filters.” Ex. 1003, 9:14–18, cited in Prelim. Resp. 11. At this stage and on this record, we preliminarily determine that Ikeda at most describes an alternative that is desirable in some situations but does not criticize, discredit, or otherwise discourage modifying it to arrive at the claimed invention in a way that would indicate that Ikeda teaches away from the claimed solution. See In re Fulton, 391 F.3d 1195, 1200–01 (Fed. Cir. 2004).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. Claim Construction We need only construe terms that are in controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner argues that it is unnecessary to construe any terms. Pet. 13. Patent Owner agrees. Prelim. Resp. 7. 11 depends on that term’s meaning. Id. at 16–18; see infra § II.C.3.b.i. Apart from our discussion about the meaning of the recited “determination” in Section II.C.3.b.i, we do not construe any terms.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a person of ordinary skill in the art (“POSITA”) would have had a minimum of a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. (Ex. 1002 ¶28.) Work experience could substitute for formal education and additional formal education could substitute for work experience. (Id.) Pet. 13. In its Preliminary Response, Patent Owner adopts Petitioner’s proposed level of ordinary skill in the art. Prelim. Resp. 7–8. In this Decision, we apply Petitioner’s proposed definition. If Patent Owner proposes a different level of ordinary skill in the art in its Response, the parties are encouraged to explain how the differences affect the obviousness analysis.” slip op. at 7
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,019,091 - Motorola Mobility LLC v. Largan Precision Co., Ltd.All claims unpatentablePTAB · Dec 8, 2023 · IPR2022-01022 · APJ John D Hamann · IPR · Final written decision
Claims 15 and 18 are unpatentable as obvious over KR872; substitute claims 26 and 27 are unpatentable, and the contingent motion to amend is denied.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable
“Accordingly, we are persuaded that one of ordinary skill in the art would have understood that KR872 was a good starting point, and would perceived a reasonable expectation of success in implementing an f-number within the claimed range (e.g., 2.0) with KR872’s lens system. We also note that Fischer teaches that “[y]ou can use a patent as a starting point”—KR872 is a published patent application. Ex. 1029, 172; Ex. 1004, face. Accordingly, for the reasons above, we find that Petitioner has shown” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedDecided for petitioner
“Motion for Additional Discovery seeking information via an interrogatory to Patent Owner relating to indicia of non-obviousness. Paper 26.2 Patent Owner filed an Opposition to this motion. Paper 27. We granted Petitioner’s Motion for Additional Discovery, and ordered Patent Owner to respond to the interrogatory. Paper 57,3 12. Patent Owner filed its verified interrogatory response as Exhibit 2041. We also authorized the parties to file papers concerning the significance of the produced information. Paper 57, 12. Petitioner filed an Explanation of the Significance of Patent Owner’s” slip op. at 3
Patent outcomesUS 8,514,499 unpatentable§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,514,499 - K/S Himpp v. Bragi GmbHInstitutedPTAB · Nov 13, 2023 · IPR2023-00901 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–16 and all petitioned grounds, finding a reasonable likelihood that the challenged claims would be shown unpatentable under the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” See 37 C.F.R. § 42.108 (2022). For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to the challenged claims and grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“effective filing date of the claimed invention “would have had a Bachelor’s Degree in Electrical Engineering or Computer Science, or equivalent experience, and one to two years of experience in the field of wireless electronic devices and/or graphical user interfaces, particularly as those systems relate to software applications used to interface with wireless earpieces.” Pet. 23 (citing Anthony Decl. ¶ 22). Patent Owner does not address this issue. See generally Prelim. Resp. We find Petitioner’s proposal to be consistent with the level of ordinary skill in the art that is reflected by the ’385 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); GPAC, 57 F.3d at 1579. On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim terms need only be construed to the extent necessary to resolve the controversy. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Petitioner submits that no claim terms need to be construed. Pet. 12. Patent Owner does not address this issue. See generally Prelim. Resp. For this Decision, we do not address any claim construction issues.” slip op. at 9
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“Although the statement in the Petition of non-reliance on the filing dates of the Hensen Provisional and Hensen CIP was infelicitous, Petitioner’s sole reliance in the Petition on the filing date of the Hensen Patent met its initial burden of production in establishing that the Hensen 3 Petitioner also provides a chart comparing Hensen Patent claim 1 to the disclosures of the Hensen CIP. Reply 3–4. However, under the AIA, this is not necessary. See Penumbra, at 29–32. Petitioner also disputes that the asserted public disclosures that Patent Owner relies on pursuant to 35 U.S.C. § 102(b)(2)(B) were not by, or obtained from, the inventor, and further argues that some aspects of the subject matter of the Hensen Patent are the not the same as that of the earlier disclosures. Id. at 4–5. We need not address these arguments for purposes of this Decision. Patent was prior art. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Given Petitioner’s citation of the Hensen Patent and its filing date, the burden of production then shifted to Patent Owner to antedate the reference; upon the occurrence of which in the Preliminary Response, the burden of production returned to Petitioner to prove that the Hensen Patent was entitled to the benefit of an earlier filing date. Dynamic Drinkware, 800 F.3d at 1380. We authorized Petitioner to file a Reply to respond to Patent Owner’s assertion of priority, by which Petitioner asserted reliance on the Hensen Provisional and Hensen CIP filing dates. Ex. 1026. Thus, we determine that Petitioner has not waived reliance on those earlier filing dates. In addition, our review of the portions of the Hensen CIP referenced by Petitioner in its comparison to the disclosures relied on in the Hensen Patent (at Reply 2) reveals that they are substantially identical, notwithstanding Patent Owner’s unsupported attorney argument to the contrary. Patent Owner’s assertion regarding the disclosures of the Hensen Provisional compared to the Hensen Patent are also without merit given that the latter incorporates the Hensen CIP by reference. Ex. 1009 ¶ 36. Accordingly, having reviewed the Parties’ arguments and evidence in this present record, we determine Petitioner demonstrates a reasonable likelihood that the Hensen Patent is prior art pursuant to 35 U.S.C. § 102(a)(2).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 10,635,385
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.