- PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “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.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - Sophos Ltd. / Sophos Inc. v. Open Text Inc.Institution deniedPTAB · Aug 2, 2023 · IPR2023-00491 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because the petition did not show a reasonable likelihood that claims 1, 8, 9, 14, or 15 were unpatentable over Liu, Tuvell, and Kester.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, we determine that Petitioner does not make a sufficient showing that its proposed combination of Liu, Tuvell, and Kester meets the limitations of independent claim 1 that include a “central server.” We accordingly conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Liu, Tuvell, and Kester.” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableDecided for patent owner
“There are a number of difficulties with Petitioner’s position, which appears to be conceived with the aid of hindsight to reconstruct the claimed invention. See Sensonics Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been perceived in the state of the art that existed at the time the invention was made.”). First, Petitioner considers each of the mirrored servers in its conception of Liu also to correspond to the claim’s recited “threat servers.” Pet. 50. As Dr. Orso testifies, “Liu’s mirror servers are effectively identical to each other” and “even if Liu’s mirror servers could be interpreted as teaching the claimed threat servers . . . [,] there is no ‘central server’ in Liu’s peer-to-peer network of mirrored servers.” Ex. 2001 ¶ 70.” slip op. at 22
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“H. Discretion Under 35 U.S.C. § 314(a) As noted above, the ’721 patent is the subject of parallel proceedings in the form of the related litigation. Supra, § I.E. Patent Owner asks that we exercise our discretion to deny the Petition based on the state of the related litigation. Prelim. Resp. 4–21. Because we deny the Petition on the merits, we do not reach this issue.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had at least a Bachelor’s degree in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent discipline, and at least two years’ worth of experience developing computer networking or network architecture, or a Master’s degree in a related field.” Pet. 9. Petitioner adds that, alternatively, a person of ordinary skill in the art “could have four or more years of work experience in computer networking and in the development of client-server systems.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Newman. Ex. 1003 ¶ 17. Patent Owner’s statement of the level of ordinary skill is generally similar, and supported with testimony by Dr. Orso, who characterizes the parties’ respective positions as having “minor variations.” Prelim. Resp. 27; Ex. 2001 ¶¶ 39–42. According to Patent Owner, a person of ordinary skill in the art “would have had a bachelor’s degree in an accredited program of electrical engineering, computer engineering, or computer science, or a similar discipline, and have 2-3 years of practical work experience in the general fields of electrical engineering, computer science, networking communications, and/or device and network security.” Prelim. Resp. 27. Patent Owner adds that “[m]ore advanced degrees and/or training in a related discipline can compensate for shorter work experience.” Id. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion not to institute inter partes review if we were to adopt Patent Owner’s proposal. See Prelim. Resp. 27 (Patent Owner stating that “[a]lthough Patent Owner’s [person of ordinary skill in the art] definition differs slightly from Petitioner’s, Patent Owner’s positions and arguments do not change based on which [person of ordinary skill in the art] definition the Board applies”); Ex. 2001 ¶ 42 (Dr. Orso testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions.”).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,413,721 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00358 · APJ Patrick M Boucher · IPR · Final written decision
Claims 1–15 are unpatentable under § 103 over Wise and Shaffer, with Burrows added for claims 3–15; the Board did not reach the Kovatch-based grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes that a person of ordinary skill in the art “would have had a Bachelor’s degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing.” Pet. 4–5. Petitioner adds that “[m]ore education could substitute for less experience, and vice versa.” Id. Mr. Lipoff supports this articulation, and neither Patent Owner nor Mr. Winters proposes any different articulation. See Ex. 1002 ¶ 74; Ex. 2063 ¶ 41 (Mr. Winters stating factors considered in defining a person of ordinary skill in the art, without stating the education or experience held by such a person). Because we find Petitioner’s proposal reasonable, uncontroverted, consistent with the level of skill reflected by the prior art, and supported by Mr. Lipoff’s testimony, we adopt it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“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); see Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Neither party proposes any express construction of any term. Pet. 5 (“Petitioner does not believe that any express constructions are necessary to resolve the invalidity issues presented in this petition”); PO Resp. 1 (“Patent Owner believes that claim construction is unnecessary and all terms of the Challenged Claims should be given their plain and ordinary meanings.”). On the record before us, we do not find it necessary to construe any term for purposes of this Decision. See 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))).” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Ex. 1001, 19:64–20:5. For this “sequential access” limitation, Petitioner relies on Shaffer’s disclosure of sequentially accessing websites according to a list, until a user is satisfied with what has been returned or the list is exhausted. Pet. 55–56. Supported by Mr. Lipoff’s testimony, Petitioner reasons that a person of ordinary skill in the art would combine Shaffer’s sequential access technique with Wise’s system “because it would have been beneficial to maximize the likelihood of finding the desired information more quickly and efficiently use computing resources, by searching in the most likely sources first, and proceeding through Wise’s index list until the user is satisfied or the list is exhausted.” Id. at 56 (citing Ex. 1002 ¶ 243). Patent Owner does not specifically dispute Petitioner’s reasons for effecting the combination of teachings from Wise and Shaffer, which we find sufficiently articulated and supported; instead, Patent Owner contends that the combination does not meet the sequential access limitation. See PO Resp. 78 (“Assuming, arguendo, this is a combination a [person of ordinary skill in the art] would consider, this combination does not disclose this claim limitation.”). Patent Owner makes two points in this respect. First, Patent Owner reiterates its contention, addressed above, that “Mr. Lipoff expressly does not rely on the Wise search index (option 1) for his opinion of the Wise disclosure of a plurality of websites.” PO Resp. 78. For the reasons we discuss in the preceding subsection, we agree with Petitioner that Patent Owner’s argument relies on “a misinterpretation of out-of-context deposition testimony.” Reply 6. As Petitioner adds, Wise discloses that an “index may be stored as one or more documents preferably in a hierarchical order” and “[t]he user may use the navigation commands to traverse the index and invoke a link to a source document.” Id. at 8; Ex. 1007, 10:7–10. Second, Patent Owner takes the position that the claim language precludes user interaction or instructions during the process of the sequential search. See PO Resp. 80. But Patent Owner provides insufficient evidentiary support for that position, and we agree with Petitioner that Patent Owner’s interpretation invokes a negative limitation that is unsupported by the plain and ordinary meaning of the claim language. See Reply 8. “While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). In this instance, both parties and both experts agree that the specification of the ’941 patent is silent with respect to user participation during sequential access. PO Resp. 81 (Patent Owner asserting that “[t]he ’941 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶” slip op. at 25
- Strike new argumentNew argument disregardedDecided for petitioner
“Based on these facts, we find insufficient reason to exclude user interaction from the plain and ordinary meaning of the sequential access limitation. We thus determine that Shaffer—which clearly involves user interaction, see Ex. 1011, 6:3–29—meets the limitation. We also determine that Petitioner articulates sufficient reason, supported by rational underpinning, to achieve the combination of teachings it proposes. We accordingly determine that Petitioner makes a sufficient showing for the sequential access limitation. 5 In its Sur-reply, Patent Owner asserts that “[a]s discussed in the [Patent Owner Response], the ’941 specification teaches against the notion of user interaction in the claim limitations involving sequentially accessing.” Sur-Reply 6 (citing PO Resp. 80–81). We disagree with this characterization of the Patent Owner Response, and treat this assertion as a new argument impermissibly raised for the first time in the Sur-reply. See 37 C.F.R. § 42.23(b) (“A sur-reply may only respond to arguments raised in the corresponding reply”). Regardless, even if we considered this argument, we would find it unpersuasive. Based on our independent review of the specification of the ’941 patent, in agreement with both experts, and in agreement with other statements of both parties, we find the specification to be “silent” on user interaction. See also Tr. 48:25–49:23 (Patent Owner conceding at oral hearing that the specification “is silent” on this issue).” slip op. at 27
Patent outcomesUS 7,881,941 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,881,941 - Google LLC v. Parus Holdings, Inc.All claims unpatentablePTAB · Aug 1, 2023 · IPR2022-00523 · APJ Thu A Dang · IPR · Final written decision
Claims 1–15 are unpatentable: claims 1–2 as obvious over Wise and Shaffer, and claims 3–15 as obvious over Wise, Shaffer, and Burrows.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Mr. Lipoff, contends that a POSITA “would have had a Bachelor’s Degree in electrical engineering, computer science or a related field, and at least two years of experience with voice interfaces and information processing,” wherein “[m]ore education could substitute for less experience, and vice versa.” Pet. 4–5 (citing Ex. 1002 ¶¶ 40, 61–74). Patent Owner does not contest Petitioner’s proposal or offer an alternative. See generally PO Resp. 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the ’402 patent was filed before March 16, 2013, the effective date of the relevant amendment, the pre-AIA version of § 103 applies. claimed invention because, based on the record, this proposal is consistent with the ’402 patent, the asserted prior art, and is supported by the testimony of Mr. Lipoff.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither Petitioner nor Patent Owner proposes any claim construction. See Pet. 5; See generally PO Resp. We do not perceive a need to construe any claim terms of the ’402 patent to resolve the disputed issues before us. See, e.g., 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) (holding that “only those terms need to be construed that are in controversy, 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. in the context of an inter partes review).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightDecided for petitioner
“While a negative limitation need not be recited in the specification in haec verba, there generally must be something in the specification that conveys to a skilled artisan that the inventor intended the exclusion.” Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 1017 (Fed. Cir. 2022). Here, Patent Owner does not provide sufficient evidentiary support that conveys an intended exclusion of user interaction during sequential access. Instead, both parties and both experts merely point out that the specification of the ’402 patent is silent with respect to user participation during sequential access. PO Resp. 73 (Patent Owner asserting that “the ’402 patent is silent as to the participation of a user in the sequential search process”); Ex. 2063 ¶ 289 (Mr. Winters testifying that “there is no disclosure in the specification of the ’402 patent related to user interaction in the sequential search process”); Pet. Reply 5 (Petitioner asserting that Patent Owner is “[i]mporting a requirement that user interaction is precluded by the claims—a negative limitation, when the specification is wholly silent on it”); Ex. 2061, 107:15–22 (Mr. Lipoff agreeing that “there’s no specific mention of the user interacting” in the portion of the specification related to “the sequential search”). As the Federal Circuit explained in Novartis, silence is not sufficient support for a negative limitation. See Novartis, 38 F.4th at 1017. interaction from the plain and ordinary meaning of the sequential access limitation. Instead, we are persuaded by Petitioner’s reliance on Shaffer for disclosing the sequential access limitation as recited. See Ex. 1011, 6:3–29. In particular, Shaffer discloses determining whether a system is at the end of a list of sites to visit, and sequentially visiting the sites until the user is satisfied. Ex. 1011, 6:3–29. Furthermore, Wise’s system accesses web pages relating to a subject phrase to retrieve user-requested information. Ex. 1007, 6:31–49. We credit the supporting testimony of Mr. Lipoff, which is consistent with the teachings of Wise and Shaffer, in which he testified that a POSITA would have been motivated to modify Wise’s system that accesses websites to retrieve user-requested information based on Shaffer, resulting in a system that accesses websites sequentially/subsequently until information is found. See Ex. 1002 ¶ 200. We disagree with Patent Owner that the ’402 patent’s specification “teaches against the notion of user interaction in the claimed ‘sequentially accessing’ operation,” which “is time consuming and inefficient.” PO Resp. 73–75. A given course of action often has simultaneous advantages and disadvantages, which “does not necessarily obviate motivation to combine.” Allied Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016). Here, Petitioner has articulated sufficient reason, supported by rational underpinning, to effect the combination of teachings it proposes. We credit Petitioner’s contention, which is supported by Mr. Lipoff’s testimony, that a POSITA would have been motivated “to apply Shaffer’s sequential search technique when retrieving information from websites in Wise’s ranked index” in order to “maximize the likelihood of finding the desired information and efficiently use computing resources by searching in slip op. at 24
Patent outcomesUS 8,185,402 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,185,402 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Jul 21, 2023 · IPR2023-00289 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1–30 over the petition’s § 103 grounds, finding a reasonable likelihood that CrowdStrike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Conversely, we recognize that Patent Owner cites certain routine (nonbinding) Board decisions that have weighed this factor in favor of discretionary denial, even in the absence of any stay motion. See Prelim. Resp. 5–6. While we have considered such decisions, we find them of limited relevance to the specific facts before us, as applied within Fintiv’s binding guidance. We treat this factor as neutral.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Ex. 1002, 633–634. Divorced from the context of the rejection the Examiner was reconsidering, namely over the combination of Dozortsev and Kester, this argument conceivably supports Patent Owner’s position. But within that context, the Examiner evidently found convincing that it would not have been obvious to modify Dozortsev to automate mask generation in light of Kester’s teachings. It is not apparent that the Examiner considered whether it would have been obvious to modify Kester to incorporate such automation, particularly in light of the teachings of an additional reference that was not before the Examiner. See id. at 802–803 (Examiner declining to provide specific reasons for allowance). That is, we agree with Petitioner that the challenges it advances over Kester and Honig are different in character from the combination of Dozortsev and Kester that the Examiner considered. See Pet. 6. We necessarily consider the Applicant’s argument against the backdrop of the Dozortsev-Kester rejection that was at issue during prosecution, not how that argument might be differently perceived if it had been made with respect to the Kester-Honig challenge presented by Petitioner. We conclude that substantially the same art or arguments were not previously presented to the Office, such that the first part of the Advanced Bionics framework is not satisfied. We accordingly do not reach the second part of that framework in our evaluation, and we decline to exercise our discretion under 35 U.S.C. § 325(d) to deny the Petition.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f. Summary For the reasons discussed above, we conclude that Petitioner demonstrates a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Kester and Honig.” slip op. at 41
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). But we note that we would reach the same ultimate conclusion to institute inter partes review if we were to adopt Patent Owner’s proposal. See Ex. 2001 ¶ 65 (Dr. Medvidovic testifying that the “minor variations” in the parties’ proposals “would not alter [his] opinions”).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,418,250 - PTAB · Jul 18, 2023 · IPR2023-00255 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1, 4, 5, and 8–23 on all asserted grounds, finding a reasonable likelihood of prevailing on multiple obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“(1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In applying this framework, we consider the Becton, Dickinson3 factors that address discretion to deny when a petition presents the same or substantially the same prior art or arguments previously presented to the Office, including: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; 3 Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, Paper 8 at 17–18. Factors (a), (b), and (d), relate to whether the same or substantially the same art or arguments were previously presented to the Office, and factors (c), (e), and (f) relate to whether the petitioner demonstrates that the Office erred in a manner material to the patentability of the claims. Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’287 patent. Accordingly, we institute an inter partes review of claims 1, 4, 5, and 8–23 of the ’287 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(“POSITA”) “would have possessed a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, product design, or a related field” and “2–4 years of experience in working with electronic displays and have an understanding of product design issues and failure modes associated with electronic displays.” Pet. 7 (citing Ex. 1002 ¶ 37). In the alternative, Petitioner argues that “a POSITA would have had 5–7 years of experience in the field working with electronic displays and have a similar understanding of product design issues and failure modes associated with electronic displays.” Id. (citing Ex. 1002 ¶ 37). At this stage of the proceeding, Patent Owner does not propose a different level of skill in the art, or address Petitioner’s proposed definition. For purposes of this Decision, and based on the current record, we adopt the uncontested assessment offered by Petitioner.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction We construe each claim “in 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). Under this standard, claim terms are generally given 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). Only those terms in controversy need to be construed, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019). Based on the record before us, we determine that no claim term requires express construction for purposes of this Decision.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,629,287 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 17, 2023 · IPR2023-00344 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Apple would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “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.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’868 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“[T]he PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under the specific facts of this case, we agree with Petitioner’s emphasis on the combined teachings of Anthony and Hanggie in Petitioner’s challenges to the claims of the ’868 patent. To paraphrase an expression, this is one case where the combination of the teachings of the prior art is greater than the sum of its parts. As discussed below in Section III.F.3, Petitioner’s proposed combination of Anthony and Hanggie is fundamental to Petitioner’s theory of obviousness, relying on the combined teachings of Anthony and Hanggie in nearly all elements of the challenged claims. Thus, 5 U.S. Patent Application Publication No. 2002/0033848 A1 (Ex. 2009, “Sciammarella”). 6 U.S. Patent No. 6,725,427 B2 (Ex. 2007, “Freeman”). 7 U.S. Patent No. 6,768,999 B2 (Ex. 2008, “Prager”). 8 U.S. Patent Application Publication No. 2003/0179231 A1 (Ex. 2011, “Kamiwada”). 9 U.S. Patent Application Publication No. 2001/0050687 A1 (Ex. 2010, “Iida”). we find that our § 325(d) inquiry in this case must consider the combination of Anthony and Hanggie to meaningfully evaluate the Becton, Dickinson factors under the Advanced Bionics framework. During the prosecution of the ’868 patent (or the ’708 application that led to the ’868 patent), the Examiner did not reject any claims but instead allowed the claims as filed in the applicant’s preliminary amendment. See Ex. 1002, 27–29, 50–66, 68–80. In view of this record, although the ’868 patent lists on its face a number of prior art references cited by the Examiner, we agree with Petitioner that no combination of prior art substantially similar to the asserted combination of Anthony and Hanggie was considered during the prosecution of the ’868 patent.” slip op. at 15
- Skill levelSkill level petitioner adoptedOther
“Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘868 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’868 patent, the types of problems and solutions described in the ’868 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,696,868 - Vector Flow, Inc. v. Hid Global CorporationInstitution deniedPTAB · Jul 17, 2023 · IPR2023-00353 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution of IPR challenging claims 11–15, exercising § 314(a) discretion based on the parallel litigation’s timing, investment, and issue overlap.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied discretionary otherDenied
“Although we agree with Patent Owner that a stay appears unlikely even if we institute trial, there has been no actual denial of a stay as contemplated by Fintiv to weigh this factor against exercising discretion to deny institution. See Fintiv at 6–7. Also, we do not understand the statements in CAO Lighting Patent Owner highlights as setting forth a general policy by the district judge. Rather, in that case, although the timing and issue overlap factors weighed against granting a stay, the court considered other factors as well. See CAO Lighting, 2022 WL 17752270 at *2. We accordingly treat this factor as neutral.” slip op. at 19
- Expert testimonyOther
“Importantly, Petitioner never advances any firm position on how the terms “unique” and “exclusively” should properly be understood in this context, limiting the basis on which we might fully evaluate Petitioner’s argument. Instead, Petitioner’s general position is that it “does not believe express claim construction is necessary at this time for this IPR.” Pet. 14. More specifically, Petitioner asserts that “it is possible” that the terms “may be interpreted to require that a defined user profile have access privileges and credentials that are unique and exclusive to the underlying user, e.g., which are not shared by any other user or user profile in the system.” Id. at 40 (emphases added). Petitioner’s expert, Dr. Madisetti, offers no clarification. See Ex. 1002 ¶ 103 (asserting that “it is possible that the words ‘unique’ and ‘exclusively’ could be interpreted” in the same way). Patent Owner disagrees with Petitioner’s speculation as to the “possible” interpretation of the terms. Prelim. Resp. 21–26. But we need not resolve that disagreement to conclude that Petitioner’s analysis fails to articulate a “compelling” meritorious challenge. A conclusion of unpatentability cannot “plainly” follow from an analysis that declines to offer nothing more than “possibilities” as to how the claims might be understood.” slip op. at 25
- Skill levelSkill level petitioner adoptedOther
“6 Petitioner proposes that a person of ordinary skill in the art “would have possessed a bachelor’s degree in software engineering, computer science, computer engineering, or electrical engineering with at least two years’ experience in distributed or network-based computer systems, and would have had a working knowledge about various ways to receive data from network-connected devices (such as sensors) and then process and/or act upon that data as needed.” Pet. 11. Petitioner adds that “[a] person could also have qualified with more education and less technical experience, or vice versa.” Id. Petitioner supports its articulation of the level of ordinary skill in the art with testimony by Dr. Madisetti. Ex. 1003 ¶ 16. Patent Owner does not state whether it agrees or disagrees with Petitioner’s proposal. Nevertheless, we find Petitioner’s proposal consistent with the level of skill reflected by the prior art and accordingly apply it for purposes of this Decision. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 24
Discretionary denialPatents in suitUS 8,234,704 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jul 6, 2023 · IPR2023-00343 · APJ Minn Chung · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1–5, 7, 8, 10–13, 15–17, and 19 are obvious over Anthony and Hanggie, and claims 6, 9, 14, and 18 over Anthony, …
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized when “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.” After considering the information presented in the Petition, Preliminary Response, Preliminary Reply, and Preliminary Sur-reply, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’654 patent, based on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Our analysis of discretionary denial under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director Memo”). Under the Director Memo, “[c]onsistent with Sotera Wireless, Inc.,[3] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director Memo 3; see also id. at 9 (“the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“were presented to the Office.” The Board uses a two-part framework for evaluating arguments 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 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, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “Previously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Id. at 7–8. “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework, i.e., whether the art or arguments presented in the Petition are the same or substantially the same as those previously presented to the Office. Advanced Bionics at 10. Factors (c), (e), and (f) relate to the second part of that framework, i.e., “whether the petitioner has demonstrated a material error by the Office” in its prior consideration of that art or arguments. Id. 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 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 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Citing testimony from Dr. Fuchs, Petitioner asserts that a person of ordinary skill in the art (“POSITA”) as of September 13, 2005 (the earliest possible priority date of the ’654 patent) would have had “at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with 2D and 3D graphical user interfaces.” Pet. 10 (citing Ex. 1003 ¶¶ 31–32). Petitioner further states that “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Id. (citing Ex. 1003 ¶¶ 31– 32). Although Patent Owner acknowledges Petitioner’s statement, Patent Owner does not dispute Petitioner’s articulation of the level of ordinary skill. Prelim. Resp. 20 (citing Pet. 10). Nor does Patent Owner propose a definition of its own at this time. Id. Instead, Patent Owner states: “at least the inventor of the ‘654 Patent, E. Eddie Bakhash, is a POSITA, and [Patent Owner] reserves the right to further address this issue at a later point in time if necessary.” Id. For purposes of this Decision, based on our review of the ’654 patent, the types of problems and solutions described in the ’654 patent, and the cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,304,654 - PTAB · Jun 23, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenge and joined Micron as a petitioner in IPR2022-00996, with the grounds unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00996 (“996 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 996 IPR, Papers 1, 10. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 996 IPR. Petitioner represents that Samsung, the petitioner in the 996 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion. The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314.” slip op. at 2
NonePatents in suitUS 11,016,918
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.