• Dell Technologies Inc. / Dell Inc. v. Videolabs, Inc.Institution denied
  PTAB · Oct 4, 2022 · IPR2022-00628 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution because Patent Owner established priority to JP665, antedating the references asserted against sole challenged claim 1.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). Institution of an inter partes review requires that “the information presented in the petition and . . . any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The dispositive issue here is whether Patent Owner shows that the effective filing date of the ’238 patent extends to the filing date of its foreign application, thereby antedating two of Petitioner’s asserted prior art references. For the reasons set forth below, we determine that Petitioner does not show that there is a reasonable likelihood that Petitioner will prevail with respect to the sole challenged claim. Accordingly, we deny inter partes review of the ’238 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “In summary, contrary to Petitioner’s arguments, an artisan of ordinary skill would not have read JP665’s disclosed video improvements to H.26L as limited only to a coded video system (i.e., without audio) in the face of known related audio/video coding standards specifically contemplating video coding standards including H.26L and its predecessor H.263. Moreover, the parties agree that an artisan of ordinary skill would have known of the existing audio and video encoding standards. Ex. 1003 ¶ 24; Ex. 2001 ¶ 30; supra § IIIB. Therefore, Patent Owner shows that JP665 conveys possession of a component (video) used in a known system as defined by known standards (coded audio and video in multiplexing and demultiplexing systems) as required by claim 1’s preamble, element 1a, and element 1b. Based on the full record as generally summarized above, Patent Owner establishes priority of the ’238 patent to JP665, thereby antedating Bjontegaard and JVT-C167, which the Petition relies upon to allege obviousness in Grounds 1 and 2, respectively. This priority showing is fatal to the Petition’s obviousness showing.” slip op. at 22

  § 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 7,769,238
• ROKU, Inc. v. Universal Electronics, Inc.No claims unpatentable
  PTAB · Aug 11, 2022 · IPR2021-00455 · APJ Patrick M Boucher · IPR · Final written decision

  Claims 1–9 were not shown unpatentable over Chardon and HDMI 1.3a because the combination does not disclose data that itself identifies a controllable function.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “As Patent Owner observes, the two proposals differ “in terms of the level of experience specifically with home theater systems.” Id. at 10. Because all of the challenged claims make specific reference to a “home theater device,” Petitioner’s proposal is reasonable on the current record, and is additionally supported by the testimony of Dr. Russ. See Ex. 1003 ¶¶ 15– 19. Patent Owner notes that its expert, Dr. Turnbull, agrees with Patent Owner’s proposed articulation, but that Dr. Turnbull’s “conclusions resulting from his analysis did not change when reviewing the cited references from the perspective of the level of ordinary skill in the art as proposed by the Petition.” PO Resp. 10–11 (citing Ex. 2003, 31–41). We adopt Petitioner’s articulation of the level of ordinary skill for purposes of this Decision. We note, however, that we would reach the same ultimate conclusion were we to adopt Patent Owner’s proposal.” slip op. at 17

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “phrase creates a degree of ambiguity, we are mindful that “the claims themselves provide substantial guidance as to the meaning of particular claim terms” and that “the context in which a term is used in the asserted claim can be highly instructive.” Phillips, 415 F.3d at 1314. In this instance, the related phrasing that appears in the “automatically adding” and “causing” limitations of issued independent claim 1 is illuminating. Both of those limitations refer to “the controllable function of the controllable appliance that was identified by the data received from the controllable appliance.” Ex. 1001, 17:11–14, 17:21–24 (emphasis added). There is no question that the only antecedent for “the data” in these limitations is the “data that functions to identify a controllable function of the controllable appliance” recited in the “receiving” limitation. See id. at 17:8–9. And there is no apparent room in the language “that was identified by the data” for the introduction or consideration of such “other information” that Petitioner would like to use “in connection with” the recited “data” to identify the controllable function. See Reply 2.” slip op. at 19

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner reasons that a person of ordinary skill in the art would have combined such teachings from HDMI 1.3a with Chardon’s system because HDMI 1.3a “is a technical guide for the interoperability of the HDMI standard and how HDMI enabled devices operate,” and that “Chardon relies on HDMI capabilities to facilitate communication and monitoring-device state changes in its system.” Pet. 30–31 (citing Ex. 1005, 4:18–21; Ex. 1010, 17; Ex. 1003 ¶¶ 130–131). According to Petitioner, “[a] person of ordinary skill in the art would have therefore turned to at least one of the versions of the HDMI Specification to fill in any details in Chardon with respect to how HDMI-capable devices, such as those of Chardon and the ’486 patent operate, and would have had a reasonable expectation of success in doing so.” Id. at 31. Petitioner supports this reasoning with testimony by Dr. Russ that it is a “well-known industry practice” to rely on HDMI 1.3a as “specification of an industry standard” when “designing and building devices that implement the HDMI standard, incorporating all of the capabilities it offers.” Ex. 1003 ¶ 133. Patent Owner disputes the sufficiency of Petitioner’s showing. In” slip op. at 35

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “The difficulty with Petitioner’s and Dr. Russ’s position is that it is inconsistent with our adopted claim construction that the data itself identify a controllable function of the controllable appliance from which the data is received. See supra § II.C. As Patent Owner asserts, HDMI 1.3a “does not contemplate the exchange of any information that itself functions to identify a controllable function of a playback device.” PO Resp. 24 (emphasis added). All that the “Deck Status” message indicates in the example of Figure 17 is that the current status of the playback device is “Stop.” We also are not persuaded by Petitioner’s and Dr. Russ’s argument that HDMI 1.3a’s Tables 13 and 26 disclose that “Deck Info” information is returned with the “Deck Status” message, and that such “a deck status message includ[es] the features that the device can provide (e.g., play, pause, stop, etc.).” Pet. 41; Ex. 1003 ¶ 117. Reliance on such “Deck Info” information is problematic at least because it is “other information” that would be used in combination with the “Deck Status” to determine controllable functions of the controllable device, which is precluded by our adopted claim construction.” slip op. at 36

  Patent outcomesUS 10,325,486 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 10,325,486
• Google LLC v. Parus Holdings, Inc.Institution denied
  PTAB · Jul 18, 2022 · IPR2022-00355 · APJ David C Mckone · IPR · Institution

  The Board denied institution for claims 1–16 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

    “For these reasons, Petitioner has not shown a reasonable likelihood that it would prevail with respect to claim 1 as obvious over Buchner or obvious over Buchner and Launey.” slip op. at 32

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached

    “v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”); 35 U.S.C. § 314(a). In its Preliminary Response, Patent Owner contends that we should exercise our discretion to deny the Petition because Petitioner’s invalidity grounds will be resolved in a district court case3 before our deadline for a final written decision. Prelim. Resp. 15–17 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential)). However, because we find that Petitioner is not likely to prevail on the merits, and deny on that basis, we do not need to address whether we should exercise our discretion to deny based on the district court case.” slip op. at 10

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “We agree with Patent Owner. First, the ordinary meaning of “internet address” in the context of the claims is an address that conforms to IP. Claim 1, for example, recites “providing a computer operatively connected to the internet.” This is a reference to the Internet, the global network conforming to TCP/IP. Later references to “internet address” should be read in this context. See Phillips, 415 F.3d at 1314 (The Federal Circuit’s “cases provide numerous similar examples in which the use of a term within the claim provides a firm basis for construing the term.”). The Specification confirms that the Internet is a specific network and not just any network: “[T]he present invention allows users to control and monitor other systems and devices that are connected [to] the Internet or any other network by using voice commands.” Ex. 1001, 1:25–28; see also id. at 1:32–43, 1:53–56 (“Furthermore, the use of laptop or desktop computers to access the Internet requires either a direct or a dial-up connection t[o] an Internet Service Provider (ISP).”). The Specification gives a specific example of a uniform resource locator (URL) as a device identifier. Id. at 17:52–54 (“Each record will contain at least a device identifier, which may be in the form of a URL.”). It also states that “data is transmitted using the uses “internet” to distinguish the Internet from other networks. It follows that an “internet address” is an address on the Internet (or at least conforming to IP), and not an address on any arbitrary network. As Phillips counsels, “the person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification.” 415 F.3d at 1313.” slip op. at 12

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable

    “We agree with Patent Owner. Petitioner has not introduced persuasive evidence that a TCP/IP based bus would have been an obvious replacement for Buchner’s IEEE 1394 bus. Petitioner makes this argument in conclusory fashion, and Mr. Lipoff largely repeats this argument in his testimony, without meaningful additional testimony and without identifying the basis for that testimony. Ex. 1002 ¶¶ 116–117. If Mr. Lipoff contends that the 1997 IEEE article shows that an IEEE 1394 bus can be swapped for a TCP/IP bus, he has not explained that adequately or shown where the article supports such an argument. Thus, Petitioner’s contention is largely conclusory attorney argument driven by hindsight. Petitioner has not shown a reasonable likelihood that it would prevail in showing that Buchner teaches “said instruction set comprising: at least one internet address, said at least” slip op. at 29

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · Graham
  Patents in suitUS 7,386,455
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Evolved Wireless LLCInstitution denied
  PTAB · Nov 29, 2021 · IPR2021-00950 · APJ Patrick M Boucher · IPR · Institution

  The Board denied institution of IPR challenging claims 14–16 and 18–20, exercising § 314(a) discretion under Fintiv because the ITC investigation was advanced and the preliminary merits were a closer call.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied

    “In evaluating whether to do so, we consider the following factors in assessing “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Fintiv at 5–6. In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied

    “B. Analysis Institution of an inter partes review is discretionary. See 35 U.S.C. § 314(a) (2018) (stating “[t]he Director may not authorize an inter partes review to be instituted unless the Director determines that 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”) (emphasis added); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). The advanced state of either a parallel district court action or a parallel ITC investigation may warrant exercising discretion on behalf of the Director to deny a petition for inter partes review. See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential) (“NHK”); Apple Inc. v. Fintiv Inc., IPR2020-00019, Paper 11 at 5–6, 8 (PTAB March 20, 2020) (precedential) (“Fintiv”); Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), 58 & n.2, available at” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “Petitioner contends that Nokia discloses, “in the context of the disclosed handover operations, performing a contention free . . . RACH procedure (step 5 [of Nokia’s Figure 1]), wherein the identifier information necessary for the UE to communicate with the target base station during the RACH procedure was previously transmitted in a message from the source base station to the UE (e.g., Handover Command, Step 4).” Pet. 31 (citing Ex. 1037 ¶ 92). Petitioner motivates its reasoning for effecting a combination of Nokia with Hu by contending that a person of skill in the art “would recognize that the specific implementation of such a conventional, contention free RACH procedure as referenced in Nokia could be implemented using” a variety of known methods. Id. at 33. Such a person “would also have recognized,” Petitioner further contends, “that using conventional RACH procedures wherein each UE is assigned and uses its own different preamble would make the handover process quicker and more efficient by reducing contention between the mobile station and the other mobile stations on the RACH.” Id. Petitioner relies on such features to argue that “Hu discloses the full implementation level details of how such a conventional, contention free RACH procedure using allocated resources in the form of a dedicated code resource (i.e., a dedicated preamble) is performed.” Id. Patent Owner disputes Petitioner’s reading of Nokia, particularly that it discloses a contention-free RACH procedure. See Prelim. Resp. 36–43. Patent Owner correctly observes that the timing alignment in step 5 of Nokia’s Figure 1 “involves one of two different procedures: a ‘one or two step RACH procedure’ OR a ‘Non contention based access burst.’” Id. at 37. Patent Owner elaborates that, although Nokia teaches that the “UE receives allocation(s)” that can be used in an access burst in the second of these procedures, Nokia “does not even teach what an ‘access burst’ is or how it would be used in a non-contention-based manner—and certainly does not teach or suggest that the non-contention-based manner would involve a RACH procedure.” Id. at 38. Patent Owner further supports its position with “[o]ther contemporaneous submissions by Nokia [that] confirm this and explain what Nokia meant by a contention-free access burst procedure,” as well as LTE standards documents. Id. at 38–43 (citing Ex. 2009, 1–2; Ex. 2010 § 10.1; Ex. 2011 § 10.1.2.1; Ex. 2012 § 10.1.2.1). We have reviewed this evidence, and find on this record that it provides some support for Patent Owner’s position. The merits of this case thus present the “closer call” that favors exercising discretion to deny institution of an inter partes review under Fintiv.” slip op. at 18

  § 103 obviousnessDiscretionary denial
• Samsung Electronics Co., Ltd. / Taiwan Semiconductor Manufacturing Co. Ltd. v. Arbor Global Strategies LLCAll claims unpatentable
  PTAB · Nov 24, 2021 · IPR2021-00391 · APJ Karl D Easthom · IPR · Final written decision

  Claims 1, 3, 5–9, 11, 13–17, 19–22, 25, 26, 28, and 29 are unpatentable as anticipated by Alexander or obvious over the stated prior-art combinations.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “We adopt Petitioner’s proposed level of ordinary skill in the art as we did in the Institution Decision, which comports with the teachings of the ’035 patent and the asserted prior art. See Inst. Dec. 19. Patent Owner’s proposed level is slightly lower than Petitioner’s but it overlaps with Petitioner’s proposed level. Even if we adopted Patent Owner’s proposed level, the outcome would remain the same. C.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b) (2019). Under the same standard applied by district courts, claim terms acquire their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). “There are only two exceptions to this general rule: 1) when a patentee sets out a definition and acts as his own lexicographer, or 2) when the patentee disavows the full scope of a claim term either in the specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Based on the current record, no terms require explicit construction. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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))). D.” slip op. at 9

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “does not support Patent Owner’s argument about “undue experimentation” with respect to how to combine the teachings of Koyanagi and Alexander to arrive at the claimed processor module. In the passage containing the quoted testimony that Patent Owner relies upon, Dr. Shanfield testifies as follows: You have obviously got to have a circuit in mind that you're wanting to create a system-level circuit, a module-level circuit; and so you’re going to need to consider which connections you want a TSV connecting to something below. So you don't just slap it together without worrying about what connects to what. On the other hand, the putting together of the -- in Bertin, he describes the putting together of these chips and how that can be done in detail. And that piece of it is -- I guess you could characterize that as something that comes with the process and in itself isn’t something you think specifically about every one of 50,000 connections. They’re all done by the process that he gives an example of. Ex. 2014, 82:4–19.13 Dr. Shanfield’s testimony indicates that artisans of ordinary skill readily would have been able to connect different die circuits together “obviously” with “a circuit in mind . . . to create a system-level circuit, [or] a module-level circuit . . . consider[ing] which [TSV] connections [she] 13 Bertin (Ex. 1009) is employed in the ground discussed below. See infra § II.G. want[s].” See id. As Petitioner similarly argues, “[n]othing in Dr. Shanfield’s testimony, however, suggests that Petitioner ‘slap[ped] together’ Koyanagi and Alexander.” Reply 14; Ex. 1030 ¶ 79 (testifying that Patent Owner quotes his testimony “out of context” and that “at the system or circuit design level, each TSV is an interconnection between specific circuits”).” slip op. at 34

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “Initially, Alexander, a prior art reference, carries a presumption of enablement. Antor Media, 689 F.3d at 1287–1288; Amgen, 314 F.3d at 1355. Patent Owner argues that the presumption does not apply because “for a non-patent publication, such as Alexander, to be presumptively enabling, it must have been “cited by an examiner . . . barring any showing to the contrary by a patent applicant or patentee.” PO Resp. 13 (quoting Antor Media, 689 F.3d at 1288. Patent Owner also argues that “[w]hile it is true that a ‘[e]nablement of an anticipatory reference may be demonstrated by a later reference,’ the Federal Circuit has made clear that the later reference ‘must show that the claimed subject matter was in possession of the public more than one year prior to the applicant’s filing date.’” Id. at 16 (quoting Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1379 (Fed. Cir. 2001)).8 Petitioner argues that Patent Owner “mispresents the law.” As Petitioner argues, ‘[a] prior art printed publication does not need to have been ‘cited by an examiner’ to be presumed enabling.” Reply 5. In Corephotonics, 2021 WL 2577597, at *4 (nonprecedential), in the context of AIA trial proceedings, the court held that “regardless of the forum, prior art patents and publications enjoy a presumption of enablement, and the patentee/applicant has the burden to prove nonenablement for such prior art” and that “[i]t was error for the Board to suggest otherwise.” The 1995 publication date of Alexander antedates the’035 patent’s effective filing date of December 5, 2001 by more than six years. See Ex. 1006, 1 (“0-7803-2702-1/95 $ 4.00 © IEEE-1995”); PO Resp. 4 (specifying “December 5, 2001” as “the earliest effective filing date of the ’035 Patent”); Inst Dec. 20–25 (finding the publication date of Alexander is 8 The “more than one year prior to the applicant’s filing date” requirement arises from “anticipation under 35 U.S.C. § 102(b).” See Bristol-Myers Squibb, 246 F.3d at 1379.” slip op. at 14

  Patent outcomesUS RE42,035 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham
• Meta Platforms, Inc. v. Wrinkl, Inc.Instituted
  PTAB · Nov 23, 2021 · IPR2021-00882 · APJ Neil T Powell · IPR · Institution

  The Board instituted inter partes review of claims 1–23 on both obviousness grounds: Ji and Sarafa, and Ji, Sarafa, and Oh.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner contends that [a] person of ordinary skill in the art (“POSA”) at the relevant time (early 2017) would have had a bachelor’s degree in computer science or information systems and at least two years’ industry experience in designing and/or implementing user interfaces, or equivalent education and experience. Cockburn Decl. ¶ 31. Alternatively, a skilled artisan could substitute directly relevant work experience with a higher level of education, e.g., an advanced degree such as a master’s of computer science. Id. Pet. 12–13. At this stage, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art. We find Petitioner’s proposed definition reasonable and consistent with the prior art before us. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (determining that the Board of Patent Appeals and Interferences did not err in concluding that the level of ordinary skill in the art was best determined by the references of record). Accordingly, we apply the level of skill set forth above, which also comports with the testimony of Dr. Cockburn (Ex. 1003 ¶ 31).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “For the reasons explained in Sections II.C and II.D, Petitioner has demonstrated a reasonable likelihood of establishing obviousness of the challenged claims, regardless of which party’s proposed construction of “link” is more accurate. Additionally, there is presently no dispute regarding the claim language “changing display of information.” Accordingly, we need not construe expressly any claim language. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only 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) (applying Vivid Techs. in the context of an inter partes review).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Petitioner has demonstrated a reasonable likelihood of establishing that each of the challenged claims would have been obvious over Ji and Sarafa. At this stage, Petitioner has provided sufficient arguments and evidence that (1) a person of ordinary skill in the art would have had motivation and a reasonable expectation of success for the proposed combination of the references’ disclosures and (2) the proposed combination would meet all limitations of each challenged claim.” slip op. at 30

  Claim construction§ 103 obviousnesscites Phillips
  Patents in suitUS 9,860,198
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Acqis LLCInstitution denied
  PTAB · Sep 15, 2021 · IPR2021-00608 · APJ Thu A Dang · IPR · Institution

  The Board denied institution under § 325(d), finding substantially the same arguments had been presented before and Petitioner failed to show material Office error.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “Under § 325(d), in “determining whether to institute [an inter partes review], the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We determine whether to exercise our discretion to deny institution under 35 U.S.C. § 325(d) based on the framework set forth in Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GMBH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential). In Advanced Bionics, the Board applied a two-part framework in considering whether to exercise discretion to deny institution under § 325(d): “(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Advanced Bionics at 8. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. at 10. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 9

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied 325dInstitution denied

    “Institution of an inter partes review may not be authorized “unless . . . the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons stated below, we decline to institute an inter partes review of the challenged claims of the ’654 patent.” slip op. at 2

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached

    “3. § 325(d) Conclusion For the foregoing reasons, we determine that the same or substantially the same arguments previously were presented to the Office and that Petitioner fails to show that the Examiner erred by not realizing that Chu ’330 and Chu ’886 qualify as 35 U.S.C. § 102(b) prior art and are material to the patentability of the ’654 Patent claims. Accordingly, we exercise our discretion not to institute inter partes review. Advanced Bionics at 8; see also Becton, Dickinson, Paper 8, 24. III. CONCLUSION For the foregoing reasons, we exercise our discretion under § 325(d) to deny institution of an inter partes review. 26 IV. ORDER Accordingly, it is ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 26

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedDecided for patent owner

    “Chu ’886 was not included in any of the applications in the ’654 patent priority chain before the amendments in the ’138 application, the earliest possible priority date for any of the ’654 patent claims relying on this subject matter for written description support under § 112, ¶ 1, is the filing date of the ’108 application, i.e., November 10, 2011, “the earliest possible priority date for any of the ’654 Patent claims relying on this subject matter.” Pet. 15−17. However, the amendments to the ’138 application were proper because, as discussed above, when claims were added to the ’138 application that transformed previously non-essential material into allegedly essential 25 material, Patent Owner submitted an amendment to explicitly set forth the material in the specification in accordance with the procedure set forth in 37 C.F.R. § 1.57(g) (2007) and MPEP § 608.01(p) (8th Ed. Rev. 8 July 2010). See Prelim. Resp. 28−33. Petitioner has not shown sufficiently that the ’777 patent and the applications in the ’654 patent priority chain did not properly incorporate by reference Chu ’330 and Chu ’886, or that the examiner erred in entering the amendments that added the subject matter from Chu ’886 to the ’138 application. As such, we are not persuaded by Petitioner’s argument that the earliest possible priority date for the challenged claims of the ’654 patent is November 10, 2011.” slip op. at 25

  § 102 anticipation§ 103 obviousnessDiscretionary denial
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Cellect, LLCAll claims unpatentable
  PTAB · Aug 17, 2021 · IPR2020-00512 · APJ John R Kenny · IPR · Final written decision

  Claim 2 is unpatentable as obvious over Swift, Ricquier, and Suzuki; the Board did not reach the alternative ground involving Larson.

  RulingsFinal written decision

  • Skill levelSkill level board ownDecided for petitioner

    “Neither party identifies any material differences between a skill level corresponding to approximately two years of professional experience in the field of imaging devices and approximately three years of professional experience in the field of visible optical imaging devices, or any difference in the field of imaging devices and the field of visible optical imaging devices. On this record, there is none. We determine that the level of ordinary skill in the art is at the level of one who would have had a Bachelor’s degree in Electrical Engineering, Physics, or a related field, and approximately two to three years of professional experience in the field of visible optical imaging devices.6 This definition is consistent with the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). 6 We do not adopt Petitioner’s inclusion of the qualifier “minimum,” to keep the specified level of skill more definite.” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We also are guided by the principle that we only construe claim terms if, and to the extent that, it is necessary for this proceeding. See, e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e 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)). Neither party requests the construction of any claim term. Pet. 13; PO Resp. 12. Further, we do not find that any claim term requires express construction. III.” slip op. at 10

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedMixed

    “Dr. Neikirk’s testimony is rational, and we credit his testimony over the testimony of Patent Owner’s inventor, who provides no explanation as to why it was purportedly unexpected that, as compared to CCD devices, a CMOS imager with remotely located processing circuitry requires no RFI shielding. For the foregoing reasons, Patent Owner has not established that the alleged unexpected result would have been unexpected to an ordinarily skilled artisan. Further, even assuming the alleged unexpected result truly would have been unexpected to an ordinarily skilled artisan, Patent Owner has not shown sufficient nexus between the unexpected result and the claimed invention.” slip op. at 20

  • Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusNot shown unpatentable

    “Accordingly, there is no presumption of nexus, and Patent Owner has not separately proved the required nexus for the alleged licensing and commercial success. Thus, there is not a legally and factually sufficient connection between the evidence of licensing and the patented invention.” slip op. at 14

  Patent outcomesUS 9,186,052 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 9,186,052
• Apple Inc. / HTC Corporation et al. v. Invt Spe LLCNo claims unpatentable
  PTAB · Mar 25, 2020 · IPR2018-01473 · APJ Thu A Dang · IPR · Final written decision

  Claims 1–3, 5–9, and 11 were not shown unpatentable under § 103 over Keskitalo and Lindell because Petitioner did not adequately explain why a skilled artisan would combine their teachings.

  RulingsFinal written decision

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner contends that “[c]laim 1 includes limitations in means-plus[-]function format, which creates a rebuttable presumption that the [Applicant] intended to invoke 35 U.S.C. § 112, ¶ 6.”3 Pet. 7; see also Altiris Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). In the Decision on Institution, we addressed Petitioner’s proposed constructions of the means-plus-function terms (Pet. 10–12), and we determined that Petitioner has set forth proposed structures that support these limitations. Dec. on Inst. 8–12; see 37 C.F.R. § 42.104(b)(3) (2018).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “As for the other claim limitations of independent claims 1, 6, and 7, and claims 2, 3, 5, 8, 9 and 11 depending therefrom, neither party has proposed a construction of any other term. See Pet. 6–7; PO Resp. 12–13. We determine that we need not further construe expressly any other claim terms to resolve the arguments before us. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (explaining that only claim terms that are in controversy need to be construed and only to the extent necessary to resolve the controversy); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. to an inter partes review).” slip op. at 13

  • 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) (citation omitted). In that regard, Petitioner’s expert, Andrew C. Singer, Ph.D., testifies that a POSITA at the time of the invention would have been a person having a Bachelor’s degree in electrical engineering or the equivalent plus three years of experience working with digital communication systems or in network engineering or a Master’s degree in electrical engineering with an emphasis on communication systems or the equivalent plus one year of experience working with digital communication systems or in network engineering. Pet. 4–5; Ex. 1003 ¶ 35. Patent Owner does not dispute Dr. Singer’s assessment of the level of ordinary skill in the art. See generally PO Resp. We adopt and apply Dr. Singer’s assessment of the level of ordinary skill in the art, which is consistent with the level of ordinary skill reflected by the prior art of record. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (holding that absent evidence to the contrary, “the prior art itself [may] reflect[] an appropriate level” of ordinary skill in the art).” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundReasonable expectation not foundNot shown unpatentable

    “position of Patent Owner. In particular, we are unpersuaded by Petitioner’s contention that it would have been obvious to modify Keskitalo such that its predetermined thresholds for transmission power are average transmission power values in accordance with the teachings of Lindell. Pet. 26. That is, we are not persuaded that Petitioner has demonstrated by the preponderance of the evidence that it would have been obvious to have used Lindell’s average transmission power values as Keskitalo’s predetermined thresholds for transmission power. See Harmonic, 815 F.3d at 1363 (citing 35 U.S.C. § 312(a)(3) as requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”); Magnum Oil Tools, 829 F.3d at 1380 (holding that Petitioner cannot satisfy its burden of proving obviousness by employing “mere conclusory statements”).” slip op. at 24

  Patent outcomesUS 6,611,676 not shown unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 6,611,676
• ROKU, Inc. v. Universal Electronics, Inc.Institution denied
  PTAB · Mar 16, 2020 · IPR2019-01608 · APJ Sharon Fenick · IPR · Institution

  The Board denied institution because Roku did not show a reasonable likelihood that claim 10 was unpatentable over any of the three asserted obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “IV. CONCLUSION We have reviewed the Petition and Preliminary Response and have considered all of the evidence and arguments presented by Petitioner and Patent Owner. We find, on this record, Petitioner has not demonstrated a reasonable likelihood of showing claim 10 of the ’532 patent is unpatentable. V. ORDER Accordingly, it is hereby: ORDERED that the Petition is denied and no inter partes review is instituted.” slip op. at 25

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner

    “But Petitioner contends that the claimed automatic creation is consistent with the process that the ’532 Patent describes as “manually” creating a macro—the programming by a user of a sequence of actions to be assigned to a single button as shown in Figures 22a–22g and related disclosure. Pet. 8–9 (citing Ex. 1001, 24:7–47, Figs. 22a–22g; Ex. 1011 ¶ 47). Patent Owner argues that a proper understanding of the claim term should not encompass manually created macros, which in the ’532 Patent are distinct from “automatically or semi-automatically” created macros. See Prelim. Resp. 17–18 (citing Ex. 1001 23:67–24:10; Ex. 2001 ¶¶ 93–103). We agree with Patent Owner. The Specification describes “two types of macros”—one “system generated” (automatically or semi-automatically) and one “user generated” such as a macro created when “the user . . . enter[s] a sequence of keystrokes to be stored as a macro.” Ex. 1001, 23:66– 24:10, 24:25–29, 19:67–20:19. Petitioner does not show support for a construction that would encompass the manually-created macros that are specifically described as distinct from the “automatically or semi-automatically” created macros. For these reasons we decline to adopt either proposed construction. Instead we determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” (Ex. 1001, 24:7–10) is not encompassed by the claim limitation. Beyond this, we do not deem it necessary to adopt a specific construction to resolve the controversy. Vivid Techs, 200 F.3d at 803.” slip op. at 12

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner

    “Patent Owner reviews and advocates for adoption of the District Court’s determinations and reasoning. Prelim. Resp. 21–22. The District Court’s construction was based on its determination that, as this term relates to “the automatically created sequence of instructions” (emphasis added), the method step of limitation [10.3] must temporally follow the step of limitation [10.2], in which a program is used “to automatically create the sequence of instructions.” Ex. 1012, 46–47 (“Claim 10 . . . requires creating a sequence of instructions first and executing that automatically created sequence of instructions second.”). Thus, the District Court determined that “these claim limitations support that a user first interacts with an interface to create a sequence of instructions, and then separately executes those ‘automatically created’ instructions by pressing a particular button on the controlling device.” Id. at 47. Petitioner’s arguments address what the impact of adopting the proposed construction would be, but Petitioner does not propose an alternate construction. Pet. Reply passim. We agree with the District Court’s determination that the step of “causing the automatically created sequence of instructions to be executed …” ([10.3]) must occur after the creation in the “using a program to automatically create the sequence of instructions . . .” limitation ([10.2]), and the balance of the District Court’s reasoning. We construe “selection of a user input element” as “selection of a user input element separate from the one or more user interactions involved in creating the sequence of instructions.”” slip op. at 13

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached

    “motivated to combine Humpleman and Walkenbach, but does not address Petitioner’s discussion of the motivation. Prelim. Resp. 41–42; see Pet. 29– 30. More persuasively, Patent Owner argues that “Humpleman describes the exact type of manual entry of steps by a user successfully distinguished from the prior art during prosecution.” Prelim. Resp. 42–43; see id. at 36. We agree. Humpleman teaches that the player piano macro “save[s] the particular steps taken by a user while interacting with the device’s HTML pages” and “[w]hen the player piano macro executes, it performs the particular sequence of instructions as if the user was accessing the respective home device HTML page(s) and executing the sequence of steps directly.” Ex. 1003, 30:26–33. We determine that a macro generated when a user “manually program[s] a sequence of actions to be assigned to a single button such that that sequence can be repeated by a press of the single button” is not encompassed by the proper construction of limitation [10.2]. See supra § III.C.a. Even if, as Petitioner argues, a combination of Humpleman and Walkenbach would teach or suggest that the particular steps taken by the user to be repeated later would be stored in the form of computer code, this distinction does not change the fact that Petitioner relies upon Humpleman’s teachings regarding a user manually programming a sequence of actions which is repeated when the macro is selected, which is excluded by our construction from teaching or suggesting limitation [10.2]. Therefore, Petitioner does not demonstrate a reasonable likelihood of showing claim 10 is unpatentable over the combination of Humpleman and Walkenbach.” slip op. at 19

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 7,895,532

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.