- PTAB · Jan 8, 2025 · IPR2024-00798 · APJ Scott B Howard · IPR · Institution
Instituted IPR of claims 1–36 because Petitioner showed a reasonable likelihood of proving at least one challenged claim obvious over McClure-997.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 (2024) and 37 C.F.R. § 42.4(a) (2024). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“Petitioner filed a document which ranks the petitions in the instant case and IPR2024-00799. Paper 4 (Statement Regarding Multiple Petitions). Specifically, Petitioner ranks this Petition as the first petition we should consider. Id. at 1. Additionally, Petitioner argues that we should consider multiple petitions because (1) the two petitions are based on different prior art based on the ’602 patent having different effective filing dates and (2) there are a large number of claims. Id. at 1–5. Patent Owner argues that the Board routinely denies institution of multiple petitions even when there is a dispute as to the effective filing date. Prelim. Resp. 45–47. Patent Owner further argues that Petitioner has not sufficiently explained why it could not have addressed all of the claims in a single petition. Id. at 47. Because this is the first ranked petition (Paper 4, 1), we do not exercise our discretion to deny this petition on the basis of multiple parallel petitions. Although Patent Owner has presented arguments why Petitioner may not be entitled to two petitions,12 Patent Owner does not persuasively argue why we should not institute on at least one of the ranked petitions.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person having ordinary skill in the art “would have had either (1) a bachelor of science in industrial design or mechanical engineering and three years of experience designing mobile phones or (2) a master of science in industrial design or mechanical engineering and two years of experience in designing mobile phones.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶ 24). Patent Owner further argues that “[a] person with a different degree but with additional relevant experience could still qualify if the additional experience compensates for the different educational background.” Id. at 10 (citing Ex. 2001 ¶ 24). Alternatively, Patent Owner argues that “[a] person with less experience designing mobile phones could still qualify if the person has additional education that compensates for their lesser experience.” Id. (citing Ex. 2001 ¶ 24). Although Patent Owner proposes a different formulation of the person having ordinary skill in the art than Petitioner, Patent Owner argues that it “does not believe the differences in the definition of a [person having ordinary skill in the art] impact the issues presented herein for the purposes of Institution.” Prelim. Resp. 10 (citing Pet. 16). Accordingly, “Patent Owner does not dispute Petitioner’s definition.” Id. Petitioner’s recitation of the level of ordinary skill is consistent with the invention disclosed in the ’602 patent. It is also not disputed by Patent Owner at this time. Prelim. Resp. 10. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.6” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the “[c]laims should be construed according to the ordinary and customary meaning as understood by a” person having ordinary skill in the art. Pet. 16. Petitioner also proposes a construction of the term “housing . . . forming enclosed exterior lateral sides and a rear side.” Id. at 17. “Patent Owner agrees that the claims should be construed according to the ordinary and customary meaning as understood by a” person having 6 If Patent Owner disagrees with this formulation of the level of skill in the art, it must raise that disagreement in its Response. If a different level of skill would affect the outcome in this case, the parties must brief that issue as well. The failure of Patent Owner to describe how a different level of skill in the art is determinative will be a forfeiture of that argument. If there is a dispute regarding the level of ordinary skill in the art, then the parties are also encouraged to submit evidence, other than conclusory expert testimony, that supports their position. ordinary skill in the art. Prelim. Resp. 10. Patent Owner further argues that there is no need to construe the “housing” limitation at this time. Id. at 11. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).7” slip op. at 10
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,473,602 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · Jan 8, 2025 · IPR2023-00993 · APJ Michael T Cygan · IPR · Final written decision
Claims 1, 2, 7, 8, 11, 15–17, and 20 are unpatentable under § 103; claims 3–6, 9, 14, and 19 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that it would require experience with electro-mechanical control systems rather than electronic consumer product design. PO Resp. 3. Because Petitioner provides for “similar knowledge and experience through other means,” we do not discern any meaningful distinction. Thus, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for patent owner
“Determining whether a limitation that does not use the term “means” invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med, Inc. v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Limitation [1b] With respect to limitation [1b], a “moveable component,” Petitioner argues that it should be construed as a means (component) having a function (moveable) that corresponds to a structure (a moving weight). Pet. 7. Petitioner argues that “essentially any physical component can perform the function of being moved,” references different types of structure as the moving components in the ’830 patent, and concludes that therefore the term has no definite structure. Pet. Reply 2 (citing Ex. 1001, Figs. 4A–4G, 14, 15–17). Patent Owner argues for a non-means-plus-function construction of a component that “is capable of being moved.” PO Resp. 7–8 (citing Ex. 2008 ¶ 55). Patent Owner argues, and Petitioner agrees, that “there is likely no material difference between” the parties’ proffered constructions such that construction is necessary. Id. at 8; Pet. Reply 7. We agree, because Petitioner has shown, and Patent Owner does not contest, that the prior art teaches such a component under either construction. Infra § II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“We agree with Patent Owner that a showing of motivation is required. Whether a proposed combination rests on “combining disclosures from multiple references, combining multiple embodiments from a single reference, or selecting from large lists of elements in a single reference, there must be a motivation to make the combination and a reasonable expectation that such a combination would be successful.” In re Stepan Co., 868 F.3d 1342, 1346 n.1 (Fed. Cir. 2017). The General Electric decision cited by Petitioner does not hold otherwise. In General Electric, the Federal Circuit considered an obviousness challenge based on combining disclosures from multiple references. See Gen. Elec., 983 F.3d at 1339–40, 1344–52. The Federal Circuit criticized the Board for dissecting an embodiment disclosed in the primary reference into a collection of “individual elements” and requiring the patent challenger to “re-do the work already done” regarding that embodiment in the primary reference. Id. at 1351–52. The Federal Circuit did not consider an obviousness challenge based on combining multiple embodiments from a single reference. See id. at 1344–52. Therefore, we do not agree with Petitioner that no motivation to combine the Figure 3 and Figure 83 embodiments of Fukumoto need be shown.” slip op. at 29
Patent outcomesUS 9,941,830 mixedClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,941,830 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.Some claims unpatentablePTAB · Jan 8, 2025 · IPR2023-00992 · APJ Steven M Amundson · IPR · Final written decision
Claims 1, 2, 7, 8, 11, and 17 are unpatentable; claims 3–6, 9, and 14 are not shown unpatentable, and claims 15 and 16 were disclaimed.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art include (1) the educational level of the inventor; (2) the type of problems encountered in the art; (3) prior-art solutions to those problems; (4) the rapidity with which innovations are made; (5) the sophistication of the technology; and (6) the educational level of workers active in the field. Envtl. Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696–97 (Fed. Cir. 1983). Not all factors may exist in every case, and one or more of these or other factors may predominate in a particular case. Id. These factors are not exhaustive, but merely a guide to determining the level of ordinary skill in the art. Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). Moreover, the prior art itself may reflect an appropriate skill level. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design.” 3 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Resp. 18–66. Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience.” Resp. 3. Patent Owner also asserts that “[a]dditional relevant industry experience may compensate for lack of formal education or vice versa.” Id. Dr. Goossen’s testimony supports Patent Owner’s assertions. See Ex. 2008 ¶ 16.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“10. SUMMARY “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Above, we discussed issues concerning the “component” limitations in claims 1, 3, and 4 and an ambiguity in claim 4. See supra §§ III.C.4(c), III.C.5(c), III.C.6(c), III.C.7(c), III.C.8(c), III.C.9. We determine that no other claim language requires a discussion of scope or an explicit construction to decide whether Petitioner satisfies the “preponderance of the evidence” standard for proving unpatentability. D. Alleged Obviousness over Fukumoto: Claims 1–3, 7–9, and 17 Petitioner contends that claims 1–3, 7–9, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto. See Pet. 9–35; Reply 16–22. Patent Owner disputes Petitioner’s contentions. See Resp. 18–27; Sur-reply 7–14. Below, we provide an overview of Fukumoto. Then, we consider the obviousness issues. For the reasons explained below, we agree with Petitioner that claims 1, 2, 7, and 17 are unpatentable under § 103(a) because the claims would have been obvious over Fukumoto but disagree that claims 3, 8, and 9 are unpatentable based on Fukumoto.” slip op. at 44
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“2. MEANS-PLUS-FUNCTION CLAIMING The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” 35 U.S.C. § 112 ¶ 6 (2006). The absence of the word “means” in a claim limitation creates a rebuttable presumption that § 112’s means-plus-function provision does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). When a claim limitation lacks the word “means,” a party may rebut the presumption that § 112’s means-plus-function provision does not apply by demonstrating that “the claim term fails to ‘recite[] sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson, 792 F.3d at 1348 (alteration by the court) (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). Construing a means-plus-function limitation involves two steps: first, identify the claimed function or functions; and second, determine what structure, if any, disclosed in the patent’s specification corresponds to the claimed function or functions. Williamson, 792 F.3d at 1351; see Medtronic, Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1311 (Fed. Cir. 2001). For the second step, a person of ordinary skill in the art must “recognize the structure in the specification and associate it with the corresponding function in the claim.” All-Voice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007). The “duty to link or associate structure to function is the quid pro quo for the convenience” of using means-plus-function claiming. B. Braun Med., Inc., v. Abbott Lab’ys, 124 F.3d 1419, 1424 (Fed. Cir. 1997). When a limitation recites two or more functions, the specification” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Conclusion About Obviousness/Nonobviousness For the reasons discussed above, Fukumoto teaches claim 1’s subject” slip op. at 64
Patent outcomesUS 9,369,081 mixedClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,369,081 - PTAB · Jan 7, 2025 · IPR2024-01043 · APJ Gregg I Anderson · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2024); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “does not believe the ultimate definition of a [person of ordinary skill in the art] impacts the issues presented herein for the purposes of Institution.” Prelim. Resp. 11. Patent Owner proposes a similar description but “does not dispute Petitioner’s definition.” Id. (citing Ex. 2001 ¶ 25). At this stage, we agree that the level of ordinary skill is not at issue here. Petitioner’s undisputed definition is supported by the testimony of both experts and is consistent with the ’741 patent and the asserted prior art. Accordingly, for trial, we apply Petitioner’s articulation.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“distinguishes temporarily activated applications from “fully activated” applications. How a person of ordinary skill in the art would have understood “without fully activating the application” is not contradicted by Patent Owner’s arguments. The plain and ordinary meaning of the claim language does not require a change in the application, only that it is not “fully activated.” Petitioner’s understanding comports with the words of the claim. For purposes of this Decision, we find the term “without fully activating the application” included in limitation 1c is construed based on its plain and ordinary meaning, i.e., the application selected in the locked mode “cannot perform its full set of operations.”3 2. Remaining Terms We do not need to construe any remaining claim term at this time, and we apply the plain and ordinary meaning, as would have been understood by a person of ordinary skill in the art, in the context of the ’741 patent. Any other term that may require construction should be identified and construed during trial. Failure to do so may result in forfeiture of the issue for purposes of a final decision.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Petitioner argues a person of ordinary skill in the art “would have been motivated to apply Nirhamo’s user-selection teachings with Hassan because Hassan teaches the user selecting icons to determine whether or not the associated application or operation was permitted.” Pet. 28 (citing showings for limitations 1c/11c/17c; Ex. 1003 ¶ 63). Further, Petitioner argues “[i]f the user’s selection was not highlighted in some fashion, it would have been difficult for the user to navigate the device interface (e.g., computer interface), as there would not be a clear way for the user to discern whether the correct object had been selected.” Id. (citing Ex. 1003 ¶ 63). On this record, Petitioner has shown a rationale with sufficient underpinnings to combine Hassan and Nirhamo.” slip op. at 29
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,918,741 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01008 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner contends that the challenged claims do not need construction to demonstrate unpatentability. Pet. 14. Petitioner, however, notes that the parties in the ITC proceeding identified above dispute the meaning of several claim terms. Id. (citing Ex. 1026). Petitioner specifically notes that “the parties dispute what is required of independent claims 1, 5, and 16 to ‘determin[e] how many pixels’ to filter in each block.” Id. (citing Ex. 1026, 6–7). Petitioner argues that “ITC Respondent Lenovo mathematical basis (no relationship) with the pixel values of the pixels in said neighboring block’” (id. (citing Ex. 1026, 6–7)), but Patent Owner “contends that no construction is necessary,” “and the ‘plain meaning’ does not foreclose some ‘mathematical basis’ existing as long as separate decision values are calculated for each block” (id. (citing Ex. 1027, 14–19)). Petitioner indicates that Ground 1 adopts Patent Owner’s broader construction from the ITC proceeding and Ground 2 adopts Lenovo’s narrower construction. Id. at 14–15. Patent Owner argues that “none of the asserted grounds disclose or render obvious the Challenged Claims under the plain meaning of the claims (which is [Patent Owner’s] proposed construction) or under Lenovo’s narrower proposed construction.” Prelim. Resp. 29. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“Furthermore, we are not persuaded that modifying Aksu in view of Gonzalez in the manner proposed by Petitioner overcomes this problem. As noted above, Petitioner asserts that, in the proposed combination, one of ordinary skill in the art “would have understood that the Laplacian’s output would be compared directly to a threshold based on β—just like Aksu’s difference calculations—to determine how many pixels to filter.” Pet. 60 (citing Ex. 1019, 13:15–19; Ex. 1003 ¶¶ 406–410). We disagree with this assertion, however, because it relies on erroneously equating the output of calculations (i.e., |r1-rj| and |r1-ri+1|). In other words, Aksu’s difference calculations, although used in setting dr, are not the same as dr; and we are not persuaded that one of ordinary skill in the art would have considered comparing Gonzalez’s Laplacian output to threshold β because Aksu discloses comparing its difference calculations to β. As noted above, we are not directed to any disclosure in Aksu of comparing dr to β. In addition, Dr. Schonfeld’s testimony on this point is not persuasive. Specifically, Dr. Schonfeld testifies that “dr can simply be defined as the output of the Laplacian (dr=|r3-2r2+r1|), and dr could be directly compared to a threshold based on β.” Ex. 1003 ¶ 408 (underline emphasis added). This testimony, however, is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail). Moreover, opining that output of the Laplacian, dr, could be directly compared to β does not establish sufficiently that one of ordinary skill in the art would have been motivated to do so. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“[O]bviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention.”).” slip op. at 26
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“G. Discretion Under 35 U.S.C. § 325(d) Patent Owner argues that we should exercise our discretion to deny institution under § 325(d). Prelim. Resp. 64–66; Paper 8. Petitioner argues that discretionary denial is not appropriate in this case. Pet. 85–86; Paper 7. Because we are not persuaded the Petition demonstrates sufficiently a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim as discussed above, we need not reach Patent Owner’s arguments regarding discretionary denial under § 325(d).” slip op. at 29
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,641,841 - Intel Corporation v. Telefonaktiebolaget LM EricssonInstitution deniedPTAB · Dec 18, 2024 · IPR2024-01009 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on either asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelOther
“Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Dr. Schonfeld’s testimony cited by Petitioner does not rectify this problem. See Ex. 1003 ¶ 263. Dr. Schonfeld does not actually state that the well as the number of pixel differences, as “variables” that “were known to control the frequency response of the filter, or, in other words, how much particular frequencies would be filtered,” as allegedly shown by Gonzalez.9 Id. (citing Ex. 1020, 153, 273). But Dr. Schonfeld does not explain adequately how the cited portions of Gonzalez disclose that the coefficients were known to control the frequency response in a deblocking filter. Indeed, the cited portions of Gonzalez do not appear to discuss determining offsets for deblocking filtering or the coefficients used in an equation for determining offset. See Ex. 1020, 153, 273. Accordingly, this testimony is entitled to little weight because Dr. Schonfeld fails to provide a sufficient underlying basis for his opinion. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”); see also Nobel Biocare Services AG v. Instradent USA, Inc., 903 F.3d 1365, 1382 (Fed. Cir. 2018) (explaining that the Board can reject arguments based on expert testimony that lacks specificity or detail).” slip op. at 11
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 10,142,659 - Ikea Supply AG v. Everlight Electronics Co., Ltd.Institution deniedPTAB · Dec 12, 2024 · IPR2024-00988 · APJ Arthur M Peslak · IPR · Institution
The Board denied institution of IPR challenging claims 1, 2, and 4–13 because the petition’s excessive and insufficiently bounded grounds failed the particularity requirement.
RulingsInstitution decision- Other 314aInstitution denied discretionary otherDenied
“Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016). In deciding whether to institute a trial, we either institute as to all claims and challenges or as to no claims and deny institution, but we cannot institute on fewer than all claims or challenges in a petition. See 37 C.F.R. § 42.108(a); Consolidated Trial Practice Guide (“CTPG”),12 64 (PTAB Nov. 2019) (citing SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–62 (Fed. Cir. 2018); and Adidas AG v. Nike, Inc., 894 F.3d 1256, 1258 (Fed. Cir. 2018)). We “retain[] discretion to deny institution of the petition as a whole . . . even when the petition includes at least one claim subject to a challenge that otherwise meets the criteria for institution.” CTPG, 64 (citing Deeper, UAB v. Vexilar, Inc., IPR2018-01310, Paper 7 (PTAB Jan. 24, 2019) (informative); Chevron Oronite Co. v. Infineum USA L.P., IPR2018-00923, Paper 9 (PTAB Nov. 7, 2018) (informative)).” slip op. at 27
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied discretionary otherInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2024) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,554,126 - PTAB · Dec 11, 2024 · IPR2024-00848 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64, finding a reasonable likelihood of unpatentability on all challenged grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 10, 11, 15, 16, 20–22, 44, 47–49, 51–54, 58–60, and 62–64 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has applied Petitioner’s description of an ordinarily skilled artisan because the Preliminary Response “does not depend on this skill level.” Prelim. Resp. 27. Patent Owner “reserves the right to argue in favor of different level of skill should trial be instituted.” Id. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’808 patent as well as the asserted references. See Ex. 1003 ¶ 24.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Based on the current record, we agree with the parties that the term “skip coding mode” includes “a coding mode in which a zero (non-active) motion vector or a non-zero (active) motion vector is associated with each skip mode macroblock, depending on the characteristics of the motion in image segments surrounding the macroblock in question.” See Ex. 1001, 17:45–52; Ex. 1022, 5–10, 15; Pet. 12–14; Prelim. Resp. 29. “[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no other claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“Karczewicz teaches limitation 10a. See Pet. 17–25; Ex. 1003 ¶¶ 79, 155–174. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 158–161, 164, 169, 170–171; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 169. Karczewicz also discloses “assigning” these “coding options” or “coding modes” based on a rate-distortion, best-match evaluation as follows: “a comparison between the amount of data of required a) to transmit motion coefficient data determined specifically for the second segment and b) that required if the second segment’s motion vector field is determined from a projection of the motion model of the first segment plus some ‘refinement’ information.” Ex. 1006, 15:15–20; see id. at 14:12–17, 15:22–25, 17:2–4, 19:2–5; Ex. 1003 ¶ 159. Based on the current record, an ordinarily skilled artisan would have found it obvious to combine these “coding options” or “coding modes” because the combination “minimizes the number of bits needed to encode the segment (e.g., utilizing the zero motion vector when appropriate, otherwise utilizing the prediction motion vector field, without refinement, when encoding motion information for the segment).” Ex. 1003 ¶ 170.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - PTAB · Dec 11, 2024 · IPR2024-00847 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65, finding a reasonable likelihood of unpatentability on the petition’s § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, 6, 7, 9, 23–25, 28–30, 32, 34, 36, 39–41, 43, and 65 in the ’808 patent on all challenges included in the Petition.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Karczewicz teaches limitation 1a. See Pet. 17–24; Ex. 1003 ¶¶ 79, 93–115. As Petitioner asserts, Karczewicz discloses the following “coding options” or “coding modes” that collectively correspond to the claimed “skip coding mode”: (i) “[t]he segment may be represented as a prediction field only” that “may arise when the segment can be adequately represented in terms of the motion field of one or more of its previously coded neighbors and no refinement information is necessary, or in a case where the encoder has found it efficient to reduce the refinement field to zero”; and (ii) “[t]he segment can also be coded by using a zero motion vector field, e.g., a copy from the reference frame.” Ex. 1006, 17:8, 17:10–14, 31:22–24, 55:18–23; see Ex. 1003 ¶¶ 79, 96–99, 102, 110, 112–113; Pet. 21–22. For each of these “coding options” or “coding modes,” an encoder transmits no motion coefficients to a decoder and the MCI bit is zero, indicating the absence of motion coefficients. Ex. 1006, 17:8, 17:10–14, 31:22–24, 37:5–8, 37:12–13; see Ex. 1003 ¶ 111.” slip op. at 31
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artPriority date, deniedDecided for petitioner
“See Pet. 2 n.2, 3–4; Prelim. Resp. 18, 37 n.13. Patent Owner relies on the ’072 provisional to antedate Frojdh. Prelim. Resp. 37 & n.13. If a patent owner relies on an earlier application to antedate a reference, the patent owner must “show not only the existence of the earlier application, but why the written description in the earlier application supports the claim,” i.e., “all the limitations” in the claim. Tech. Licensing, 545 F.3d at 1327. Although Patent Owner notes that the ’808 patent claims the benefit of priority to the ’072 provisional’s March 15, 2002, filing date, Patent Owner does not the show why the ’072 provisional’s written description supports any of the challenged claims. See Prelim. Resp. 12–24, 37–39, 37 n.13. Based on the current record, Patent Owner has not shouldered its burden to antedate Frojdh’s November 27, 2002, filing date. See id. Hence, based on the current record, Petitioner establishes a reasonable likelihood that Frojdh qualifies as prior art because Frojdh’s November 27, 2002, filing date precedes the ’549 application’s March 14, 2003, filing date. See Ex. 1001, code (22); Ex. 1007, code (22).” slip op. at 46
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“how the combined disclosures in Frojdh and H.263 teach the claimed subject matter. See Pet. 65–75. Further, Petitioner identifies reasons that would have prompted an ordinarily skilled artisan to combine Frojdh’s teachings with H.263’s teachings with a reasonable expectation of success in achieving the claimed subject matter. See id. at 61–64. Dr. Havlicek’s testimony supports Petitioner’s positions. See Ex. 1003 ¶¶ 303–337.” slip op. at 61
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,808 - PTAB · Dec 10, 2024 · IPR2024-00972 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR of claims 1–5 and 7 on all asserted grounds, finding a reasonable likelihood that claim 1 is anticipated by Kishikawa.
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, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’733 patent and we institute an inter partes review as to all the challenged claims of the ’733 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted).” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“determined that the “not level” limitation is “[i]ndefinite,” it did so without explanation. Ex. 1016, 3. The Specification of the ʼ733 patent, however, directly addresses this term, stating “when the electrode portion cross section and the housing cross section are located on the same surface of the carrier, the electrode portion cross section and the housing cross section may be level with each other (i.e., form a flat surface) or may not be level with each other (i.e., do not form a flat surface).” Ex. 1001, 6:34–39. This description appears consistent with the plain and ordinary meaning of the word “level” which is “having no part higher than another,” “even or unvarying in height,” or “to make (a line or surface) horizontal : make flat or level.” Merriam-Webster Dictionary (Ex. 3001).5 Thus, based on the current” slip op. at 12
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“corners of a single, prior art document describe every element of the claimed invention.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Xerox Corp. v. 3Com Corp., 458 F.3d 1310, 1322 (Fed. Cir. 2006)). The prior art document “must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Id. (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). Hence, a patent challenger cannot rely on portions from different, unrelated embodiments in a prior art document to demonstrate anticipation. See id. at 1369, 1371.” slip op. at 9
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 9,640,733
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.