- PTAB · Jan 9, 2024 · IPR2023-01147 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–6 and all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’794 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’794 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis 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’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A person of ordinary skill in the art (“POSA”) at the time of the purported invention would have had either: (1) a Bachelor of Science degree in computer science, electrical or computer engineering, or a related field, and at least 2 years of work or research experience in digital communications systems, such as wireless communications systems and networks, or equivalent, or a Master’s degree in electrical engineering, computer engineering, computer science or similar field. Additional education could compensate for less practical experience and vice versa. Ex. 1002, ¶¶1-46. Pet. 10. Patent Owner does not address the level of ordinary skill in the art. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner states that “no claim terms require construction.” Pet. 10. Patent Owner’s Preliminary Response does not contain a section titled Claim Construction or similar. See Prelim. Resp. i–ii (Table of Contents). On this record and for purposes of this decision, we determine that no claim terms require express construction.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,426,794 - PTAB · Jan 8, 2024 · IPR2023-01014 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 4–6, 8, 11–14, and 18–20, finding the asserted obviousness challenges compelling over Lu-577 and Tian and Nielsen-372, Steinberg, and Tian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that inter partes review may 1 Petitioner identifies “TVision Insights, Inc.” as the real party-in-interest to this proceeding. Pet. 89. 2 Patent Owner identifies “The Nielsen Company (US), LLC” as the real party-in-interest to this proceeding. Paper 3, 2. Patent Owner states that “it is a subsidiary, either directly or indirectly, of numerous parent entities, and that Brookfield Corporation (NYSE: BN; TSX: BN.TO), through its subsidiaries and investment funds and vehicles, indirectly owns 10% or more of Patent Owner The Nielsen Company (US), LLC.” Id. not be instituted unless “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 Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we institute an inter partes review as to claims 4–6, 8, 11–14, and 18–20 of the ’243 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Conclusion Regarding Discretionary Denial In summary, factor 1 is neutral, factor 2 weighs heavily against denying institution, factor 3 weighs marginally in favor of denying institution, factor 4 weighs heavily in favor of denying institution, factor 5 weighs in favor of denying institution, and factor 6 weighs very heavily against denying institution. However, the Guidance Memo provides that where the Board “determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Guidance Memo at 4–5; see Fintiv at 5–6. And, in CommScope Techs. v. Dali Wireless, Inc., IPR2022-01242, Paper 23 (PTAB Feb. 27, 2023) (precedential), the Director instructed that, even where the analysis of Fintiv factors 1–5 favors denial of institution, the Board should not deny institution where there is a showing of unpatentability by compelling merits. As noted above, the Petition in this proceeding meets this high standard. For these reasons, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review.” slip op. at 52
- Strike new argumentNew argument consideredDenied
“29 In its Sur-reply, Patent Owner repeatedly argues that we should disregard Petitioner’s arguments opposing discretionary denial in the Reply because they were waived. See, e.g., Sur-reply 1 (“Petitioner’s Reply to Patent Owner’s Preliminary Response (Paper 7, ‘Reply’) introduces new arguments that could have been included in the Petition for Inter Partes Review (Paper 2, ‘Petition’) and that should be disregarded as being waived accordingly.”). We reject this argument. Petitioner was not required to anticipate in the Petition all of Patent Owner’s arguments for discretionary denial. See Vector Flow, Inc. v. HID Global Corporation, IPR2023-00353, Paper 11 (PTAB Aug. 10, 2023) (Director vacating decision denying institution and ordering filing of a reply to allow petitioner to address discretionary denial arguments in preliminary response.). In this case, the Board specifically authorized Petitioner to file a reply to address the request for discretionary denial by Patent Owner and for Patent Owner to file a sur-reply. Patent Owner was afforded the opportunity to substantively respond to the Reply in the Sur-reply.” slip op. at 47
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends that [a] POSITA [(Person of Ordinary Skill in The Art)] would have been a person with a bachelor’s degree in computer science, electrical engineering, or a similar field with at least two years of experience in media analysis or a person with a master’s degree in computer science, electrical engineering, or a similar field with a specialization in media analysis. . . . . A person with less education but more relevant practical experience may also meet this standard. . . . . A POSITA in 2011 would have known or been able to implement systems that collect and analyze audio and image data, techniques for audio feature extraction and identification, techniques for image processing (e.g., resolution adjustment), and face or head analysis techniques. Pet. 7 (citing Ex. 1003 ¶¶ 46–49). Patent Owner does not dispute Petitioner’s assessment of the level of ordinary skill. See generally Prelim. Resp. Determining the level of ordinary skill in the art involves various factors, 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). The prior art of record also reflects the level of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Institution Decision, we adopt the assessment offered by Petitioner, as it is not disputed by the Patent Owner and is consistent with the ’243 patent and the asserted prior art.11” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,470,243 - PTAB · Jan 8, 2024 · IPR2023-00987 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–5 and 19–21 over all asserted grounds, finding a reasonable likelihood of unpatentability based on the Matthies–Yamada and Phan grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’803 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’803 patent on all grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this preliminary stage and on this record, we adopt Petitioner’s statement of the level of ordinary skill in the art. It is supported by the testimony of Dr. Pattison and not disputed by Patent Owner. Further, it appears consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those claim terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 12
- Expert testimonyPetitioner expert creditedOther
“At this stage, Petitioner’s contentions are supported by Dr. Pattison’s testimony, and Patent Owner’s positions, though extensively supported with citations to the underlying record, amount to attorney argument. Notwithstanding, we look forward to the parties further developing the record at trial on the potential incompatibilities in Petitioner’s combination, including the differences between PMOLED and AMOLED technologies and any differences in pixel geometry between Matthies and Yamada. We will be better able to decide these issues with a fully developed record.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,818,803 - PTAB · Jan 8, 2024 · IPR2023-01075 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–6, 10, 12, 17–19, 21–23, 40–47, 51, and 52 on all asserted grounds, finding a reasonable likelihood of success on the Matthies and Yamada combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–6, 10, 12, 17–19, 21–23, 40–47, 51, and 52 of the ’578 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“ordinary skill in the art “would have had a degree in electrical engineering, materials science, physics, or a similar discipline, along with 2 years of professional experience working with display design, including OLED displays, or an equivalent level of skill, knowledge, and experience.” Pet. 10 (citing Ex. 1003 ¶¶ 37–40). Petitioner further notes that such a person of ordinary skill in the art “would have been aware of and generally knowledgeable about OLED materials, and display pixel design, layout, and operation. Id. (citing Ex. 1003 ¶ 40). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time, noting that “[f]or purposes of this Preliminary Response, Patent Owner does not believe it is necessary to define the level of ordinary skill in the art.” Prelim. Resp. 12.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction.5 See, e.g., Realtime Data, 5 If either party contends that explicit claim construction is necessary in order to make a final determination whether or not any challenged claim is unpatentable based on the arguments and evidence presented, it should clearly explain why during trial and provide a clear and unambiguous construction with supporting evidence including specifically identifying the challenges, claims, and limitations to which the construction is necessary. LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has put forth unrebutted testimony from Dr. Pattison that an ordinarily skilled artisan “would . . . have had a more than reasonable expectation of success” and “it was routine in the art to resize OLED pixels to improve display lifetime.” Pet. 74 (citing Ex. 1003 ¶¶ 437–439). And Dr. Pattison testifies that a skilled artisan would have considered application of Yamada’s teachings regarding pixel size “to amount to nothing more than the use of [a] known design option—that Matthies itself already allows for— to solve a known prior art problem.” Id. at 75 (citing Ex. 1003 ¶¶ 440–441; Ex. 1004, 12:9, 12:41–46, 17:31–37). Dr. Pattison further testifies that “both Matthies and Yamada relate to pixels designs intended for use with OLED displays” and “[t]his similarity in purpose would have given a POSITA yet another reason to believe that the references’ teachings would be successfully used together.” Id. (citing Ex. 1003 ¶¶ 445–446). Patent Owner’s positions, though extensively supported with citations to the underlying record, amount to attorney argument.8 See Prelim. Resp. 13–30. Petitioner’s contentions are well-supported and reasonable. At this stage and on this record, we determine that Petitioner’s position is better supported, has more merit, and is sufficient for institution.9” slip op. at 40
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,594,578 - PTAB · Jan 8, 2024 · IPR2023-00988 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–10, 13, and 15 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1, 2, 4–10, 13, and 15 of the ’683 patent on all grounds of unpatentability presented.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Pattison, Petitioner contends a person of ordinary skill in the art “would have had a degree in electrical engineering, materials science, physics, or a similar discipline, along with 2 years of professional experience working with display design, including OLED displays, or an equivalent level of skill, knowledge, and experience.” Pet. 10 (citing Ex. 1003 ¶¶ 37–39). Petitioner further notes that such a person of ordinary skill in the art “would have been aware of and generally knowledgeable about OLED materials, and display pixel design, layout, and operation.” Id. (citing Ex. 1003 ¶ 39). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time, noting that “[f]or purposes of this Preliminary Response, Patent Owner does not believe it is necessary to define the level of ordinary skill in the art.” Prelim. Resp. 10. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition is consistent with the ’683 patent and the asserted prior art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. 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))).” slip op. at 13
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedOther
“Petitioner appears to have cited Murai’s “Registration Date” of April 23, 2010, as being the publication date. See Pet. 15; Ex. 1007, code (24). It is unclear based on the present record whether this is the correct date for qualifying Murai as a “printed publication” under pre-AIA § 102(b). The parties should further address this issue at trial.” slip op. at 43
Claim construction§ 102 anticipationcites Phillips · KSR · GrahamPatents in suitUS 10,854,683 - PTAB · Dec 15, 2023 · IPR2023-00941 · APJ Jameson Lee · IPR · Institution
The Board instituted inter partes review of claims 1–18 on the asserted §103 ground over Kimura, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“j) Conclusion For reasons discussed above, Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of claim 7 over Kimura. 4. Dependent Claims 9–12 Claims 9–12 each depend, directly or indirectly, from claim 7. Ex. 1001, 9:59–10:19. Petitioner specifically addresses all of them in detail. Pet. 56–62. Petitioner’s assertions are supported by the cited evidence, and Patent Owner does not present any argument additional to those it presents for claim 7. Petitioner has shown a reasonable likelihood that it would prevail in establishing obviousness of each of claims 9–12 over Kimura.” slip op. at 45
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“In particular, we are persuaded preliminarily that an ordinarily skilled artisan would have known to implement a version of the pixel circuit shown in Figures 33A–33E of Kimura with all pMOS transistors. Notwithstanding Patent Owner’s arguments to the contrary, discussed below, we are sufficiently persuaded that there is general interchangeability of nMOS and pMOS transistors used as switching transistors. Thus, we are sufficiently persuaded, for institution purposes, that it would have been obvious to one of ordinary skill in the art to make a modification of Kimura’s embodiment shown in Figures 33A–33E to use pMOS type transistors for all switching transistors in the pixel circuit, which leads to an all pMOS version of Kimura’s Figure 33 embodiment.6” slip op. at 23
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“one of the first or fourth transistor to pMOS type transistor is, if anything, a teaching away from using only pMOS transistors in the embodiment shown in Kimura’s Figures 33A–33E. Prelim. Resp. 28–29. We disagree. That Kimura describes a benefit for making the first and fourth transistor of different polarity types does not constitute a teaching away from having them both being of the same polarity type. A reference teaches away from a claimed invention if it criticizes, discredits, or otherwise discourages modifying the reference to arrive at the claimed invention. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The Court of Appeals for the Federal Circuit has stated: “[T]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away . . . because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.” Fulton, 391 F.3d at 1201. Accordingly, in order for there to be teaching away, the statement in Kimura must rise above merely assessing the advantages and disadvantages among viable alternatives. It does not. The Federal Circuit explained that “[c]hoosing one alternative necessarily means rejecting the other,” and that “[t]his interpretation of our case law [treating the choosing of one alternative as a teaching away from the other alternative] fails.” Fulton, 391 F.3d at 1201. Thus, we do not find that Kimura teaches away from making the first and the fourth transistor of the same polarity type.” slip op. at 25
- Expert testimonyPetitioner expert creditedDecided for petitioner
“If the design need is for a transistor to be used as a simple on/off switch, then either an nMOS transistor or a pMOS transistor can be chosen – since, as shown in the figure from Kang and Leblebici 2003 [Ex. 1011] above [in ¶ 56 of the same Declaration], each can function as a simple on-off switch. As the primary operational difference between nMOS and pMOS (when a simple switch is desired) is that the on/off characteristics are the opposite of each other – and the on-off signals to be applied must be altered (i.e., reversed as it were) to account for this. In particular, as described in Section VII.A.1, nMOS devices turn on in response to a “high” voltage on the gate terminal and turn off when a “low” voltage is applied. This is known in the art as “active-high” signaling. pMOS transistors are just the opposite – they turn on when a “low” voltage is applied to the gate terminal and turn off in response to a “high” voltage on the gate. This is known in the art as “active-low” signaling. Changing the polarity of a switching transistor (from nMOS to pMOS or vice versa) would require changing the polarity of the gate signal to achieve the same functionality, but doing so was easy and well-known to a POSITA. Id. ¶ 57 (the reference to Kang and Leblebici 2003 identifies a figure which illustrates a CMOS inverter having an nMOS switch and a pMOS switch). The above-quoted testimony of Dr. Foty is not merely conclusory. Rather, it relies on the disclosures of Kang, Leblevici 2003, and Kimura. It also relies on the level of ordinary skill in the art and explains specifically how the change form nMOS to pMOS switching transistor, and vice versa, would be done. Also, notably, Patent Owner does not assert that implementing a switching transistor by a pMOS transistor exceeds the level of ordinary skill in the art. We also preliminarily credit the testimony of Dr. Foty because it currently stands unrebutted.” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,414,599 - Intel Corporation v. Bitmicro, LLCInstitutedPTAB · Dec 15, 2023 · IPR2023-00783 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1–3, 6, 10–12, and 15 on all asserted grounds, finding a reasonable likelihood of success on obviousness over Nishida, Harari, and Nakao.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Petitioner identifies itself, Intel Corporation, as real party-in-interest. Pet. 90. Patent Owner identifies itself, BitMicro, LLC, as the real party-ininterest. Paper 3, 2. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’939 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have had at least a bachelor’s degree in electrical or computer engineering and two years of experience working on computer system architecture and power management circuits, or an equivalent combination of education and experience.” Pet. 7 (citing Ex. 1003 ¶ 90). Patent Owner does not address the level of skill of the ordinary artisan. See generally Prelim. Resp. We regard Petitioner’s definition as consistent with the ’939 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“On the record before us, we have not been directed to any dispute between the parties that § 112 ¶ 6 does not apply to the “means for” clauses recited in the challenged claims. Where claim language may be construed according to 35 U.S.C. § 112(f) (or its predecessor, § 112 ¶ 6), a petitioner must provide a construction that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function. 37 C.F.R. § 42.104(b)(3). In accordance with these requirements, Petitioner provides constructions for all the means-plus-function clauses in the challenged claims. See Pet. 7–15. Where applicable, Petitioner asserts its proposed constructions are consistent with constructions made by the district court in related litigation. Id.; see also Ex. 1018. Patent Owner contends “the Board need not engage in any pre- institution claim construction,” does not substantively address or contest Petitioner’s proposed claim constructions, and does not propose any constructions itself. See Prelim. Resp. 8–10. Based on the record before us, we adopt, for purposes of this” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“3. “means for deactivating” (claim 10) Petitioner proposes that this term, recited in claim 10, should be construed consistent with the district court construction as means-plus-function, with the recited function being “deactivating the plurality of super capacitors to cut off power to the computing engine based upon the plurality of super capacitors discharging to a predetermined level” and the corresponding structure as “a down-converter (and equivalents), and switches, transistors, gates, etc. that are generally known in the art.” Pet. 10–12. Patent Owner does not provide a construction or any specific arguments directed to this limitation. See Prelim. Resp. 8–10.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 6,496,939 - PTAB · Dec 14, 2023 · IPR2023-00978 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 28 and 29 across all asserted grounds, finding a reasonable likelihood that both claims are obvious over Vornefeld and Atsuta.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’931 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’931 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Our analysis 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’s Memorandum”), available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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.” Id. Accordingly, because Petitioner has offered a stipulation like that in Sotera, we do not discretionarily deny institution under Fintiv.” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Patent Owner’s allegations appear to be mere speculation. Thus, we determine that Patent Owner has not demonstrated that there is a legally significant relationship between the two petitioners that might warrant denying a follow-on petition by a different petitioner. As such, General Plastic factor 1 weighs against denying institution.” slip op. at 19
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Although Vornefeld is art previously presented to the Office, Petitioner’s respective challenges rely heavily on Atsuta and Goldburg for teachings pertaining to the limitation added by dependent claims 28 and 29, the only challenged claims in this case. Patent Owner does not assert that Atsuta was previously presented to the Office. Patent Owner implies that Goldburg was previously presented to the Board in the prior IPR, arguing that “[prior petitioner] Sprint specifically relied on Goldburg as part of its expert declaration in the prior IPR to show the state of the art.” Prelim. Resp. 50. Petitioner replies that, “[w]hile [Patent Owner] offers that Goldburg was cited (for background) in a declaration in the Sprint IPR . . . , [Patent Owner] fails to acknowledge that Goldburg was not (i) an exhibit in the Sprint IPR, (ii) mentioned or applied in the Sprint Petition, or (iii) addressed in the final written decision.” Pet. Reply 3 (citing Exs. 1009, 1014). Patent Owner does not dispute Petitioner’s representations. See PO Sur-reply 3 (arguing that Petitioner “quibbles over whether Goldburg was a formal exhibit before the Board in the prior Sprint IPR,” but not asserting that Petitioner is incorrect). We find that Goldburg was not previously presented to the Board.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,230,931 - Snap Inc. v. Playvuu, Inc.InstitutedPTAB · Dec 6, 2023 · IPR2023-00848 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–11 on all asserted grounds, finding a reasonable likelihood that Snap would prevail on its obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“See 35 U.S.C. § 314(a) (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). The Board’s precedential decision in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”) sets forth six factors that we consider as part of this balanced assessment when determining whether to use our discretion to deny institution. Our analysis 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’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. (precedential as to § II.A)). We have considered all arguments and evidence presented by both parties as to whether we should exercise discretion and deny institution of inter partes review under Fintiv. Pet. 23–25; Prelim. Resp. 23–28; Prelim. Reply, Prelim. Sur-reply. Petitioner submitted a stipulation titled “Defendant/Counterclaimant Snap Inc.’s Sotera Stipulation,” which was filed in the co-pending district court litigation and, with the exception of the listing of the grounds in the instant proceeding, is the same as the stipulation filed in the Sotera case. Ex. 1047. Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in [the co-pending district court litigation] the specific grounds [asserted in this inter partes review], or any other ground . . . that could have been reasonably raised in the IPR” (Pet. 23; Ex. 1047), we do not discretionarily deny institution under Fintiv.” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“find that Cohen was previously presented to the Office and the disclosures in the art asserted in the Petition, including Chu, Sherman, Joslin, and Lei, overlap the art before the Examiner during prosecution. We do not provide further analysis of part one of the Advanced Bionics framework because determine that Petitioner demonstrates that the Office erred in a manner material to the patentability of the challenged claims. 3.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“technical field, and the asserted prior art, we agree with Petitioner’s proposed qualifications for an ordinary level of skill, except we decline to adopt “at least” as that language is vague and open-ended. Otherwise, Petitioner’s proposed definition is consistent with the level of skill reflected” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,931,911 - PTAB · Nov 14, 2023 · IPR2023-00846 · APJ Brent M Dougal · IPR · Institution
The Board instituted review of claims 1, 2, 4, 6, 7, 9, 11–13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, and 61 on all grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner bears the burden to demonstrate unpatentability. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). At this preliminary stage, we determine whether the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. See 35 U.S.C. § 314(a). A claim is unpatentable as obvious under 35 U.S.C. 103(a) if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). We resolve the question of obviousness based on underlying factual determinations, including: (1) the scope and content of the prior art; (2) any differences between the prior art and the claims; (3) the level of skill in the art; and (4) when in evidence, objective indicia of obviousness or nonobviousness. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). We apply these principles to the Petition’s challenges. B. Level of Ordinary Skill in the Art” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention (POSA). Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art computer engineering, or electrical engineering (or equivalent experience) and at least two years of practical experience with printer technology. Pet. 10 (citing Ex. 1002 ¶¶ 21–25). We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’233 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“The Petition states that no terms require express construction at this stage. Pet. 9–10. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner argues that Keeney renders obvious claims 1, 2, 4, 6, 7, 9, 11–13, 17–21, 27, 29, 30, 35, 36, 47, 48, 50, 52, 57, and 61. Pet. 13–60. As previously noted, Patent Owner did not file a preliminary response. In our analysis below, we determine that Petitioner has established a reasonable likelihood of succeeding in showing that claim 47 is unpatentable.” slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 9,965,233
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.