- Bote, LLC v. Twitch LLCInstitutedPTAB · Nov 27, 2024 · IPR2024-00889 · APJ Cynthia L Murphy · IPR · Institution
The Board instituted IPR of claims 1–15 on all six grounds, finding a reasonable likelihood that claim 10 is unpatentable over Hoffmann, Swan, and Hoge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). As discussed above, we determine the record before us sufficiently shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims (i.e., independent claim 20 on Ground One). Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–15), based on Grounds One–Six asserted in the Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“as having “a B.S. or higher degree in Mechanical Engineering (or an equivalent degree/experience) with sufficient experience in design, manufacture, use of inflatable watercraft and/or the materials and components that make up such products.” Pet. 18, see also Ex. 1004 ¶ 72. Petitioner contends that “[d]ue to the modest design and implementation complexities in the field,” POSITA will have “an average-level of problemsolving acumen and would seek solutions to design, material selection, and manufacturing issues for inflatable watercraft problems, but would look to other areas of recreational watercraft, surfboards, boats, other inflatable structures etc. to find similar solutions to similar problems confronted in the field.” Pet. 19–17; see also Ex. 1004 ¶ 72.10” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner asserts that it would have been “obvious to add Hoge’s tent covering (fabric floor 28)” to Hoffmann’s inflatable floor 6 and inflatable sides 4, 7 “to protect against punctures in such inflatable chambers.” Pet. 64. And Petitioner provides evidence that “modifying Hoffmann in such a way would be a routine implementation for a POSITA requiring merely adding an additional protective fabric floor (as informed by Hoge), rending predictable results.” Ex. 1004 ¶ 137. Patent Owner has not directed us to any contrary evidence. Thus, based on the evidence and arguments before us, there is a reasonable likelihood that Petitioner would prevail in showing that it would have been obvious to provide Hoffmann’s inflatable boat with a tent covering extending between its lower chamber (floor 12) and its upper chamber (i.e., tubes 14, 16).” slip op. at 11
§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,479,458 - PTAB · Nov 8, 2024 · IPR2024-00777 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 16–27 based on the grounds set forth in the Petition, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) due to the advanced state of the parallel district-court action, which Patent Owner notes has scheduled trial date of May 19, 2025. See Prelim. Resp. 17. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),13 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a) based on parallel litigation.” slip op. at 7
- Parallel petitionsDenied
“institution under § 314(a) because this is the second proceeding challenging the ’815 patent and Petitioner has not justified two such challenges. Paper 8 (Patent Owner’s Response to Petitioners’ Notice Ranking Multiple Petitions). Petitioner filed a Notice Ranking Petitions, noting that this proceeding involves a second petition challenging the ’815 patent, after a petition in IPR2024-00735 challenged claims 1–15. Paper 4 (“Pet. Ranking”). Petitioner’s Ranking asserts that the two petitions challenge different claims, and that the 27 collectively challenged claims are voluminous, occupying approximately six columns of the ’815 patent. Pet. Ranking 2. We note also that the independent claims challenged in this proceeding include limitations not present in the claims challenged in the -735 IPR, such as multiple user profiles and encrypted video information. See Ex. 1001, claims 16, 21. We conclude that the ’815 patent’s claims justify two petitions based on a combination of the number of 13 Available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. limitations and the number of claims. We therefore decline to discretionarily deny institution under § 314(a) based on multiple parallel petitions.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 100. The Horn–Baumgartner–Candelore combinations were not presented during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner–Candelore grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have held a bachelor’s degree in Computer Science, Electrical Engineering, and Computer Engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1002 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 7, 2024 · IPR2024-00867 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 11, 12, 16, 17, 19, 20, and 84 on all petitioned grounds, finding a reasonable likelihood of success on the Nozaki-Haitani obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”)3 to clarify “the [Board’s] current application of Fintiv to discretionary institutions where there is parallel litigation” and to “confirm[] that the precedential import of Fintiv is limited to the facts of that case.” Guidance Memo 2. In particular, the Memorandum states that the Board will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) 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. at 9 (emphasis added).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“3. Discussion We disagree with Patent Owner’s assertion that “Nozaki was considered during . . . reexamination of the ’848 Patent.” Prelim. Resp 4 (citing Ex. 1004, 165–190). To support this assertion, Patent Owner cites to 25 pages of the ’848 reexamination file (see Prelim. Resp. 4 (citing Ex. 1004, 165–190), arguing that “the grounds presented by Petitioner are duplicative of the art and arguments considered by the Examiner during . . . reexamination of the ’848 patent” (Prelim. Resp. 6), and concluding that “many of Petitioner’s arguments are simply a rehash of the reexamination request that was thoroughly considered by the Office during reexamination” (id. at 12). Patent Owner, however, provides no specific examples, comparisons, or analysis between the evidence and arguments concerning Nozaki presented in the Petition with the evidence and arguments concerning Nozaki ostensibly considered during the ’848 patent reexamination. Indeed, the only mention of “Nozaki” we can discern in the 25 pages of the ’848 reexamination file cited by Patent Owner are two listings of “Nozaki” patents appearing on pages 171 and 186 of the reexamination file. ’108”); Nozaki U.S. Patent 8,538,252 (“Nozaki ’252”)). These two “Nozaki” patents, however, are not the same Nozaki reference asserted by the Petitioner as prior art in the Petition. See Pet. 5 (citing Ex. 1006, WO 2007/060980 (“Nozaki ’980”)). The Nozaki reference asserted by Petitioner in the Petition is titled, “Electronic Camera and Image Processing Device,” is directed to an “electronic camera compris[ing] an image sensor, an image processing section, a face detecting section, a controlling section, a face image creating section, or a face recognizing data creating section, and a recording section,” contains 19 figures and has 57 claims. See Ex. 1006, code (57) Abstr., ¶ 41, pgs. 52–60.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, with at least two to three years of experience in the field of image processing.” Pet. 4 (citing Ex. 1005 ¶ 35). Petitioner further asserts that “[a]dditional education could substitute for professional experience, and significant experience in the field could substitute for formal Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 22. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’848 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Bederson. See Ex. 1005 ¶ 35. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, Petitioner contends that “all claim terms in the Challenged Claims should be construed according to their plain and ordinary meaning to a [person of ordinary skill in the art].” Pet. 5. Patent Owner states that “[g]iven the multiple reasons why the Petition should not be instituted, including 35 U.S.C. § 325(d) and 35 U.S.C. § 314, and to minimize the disputes that the Board needs to address at this preliminary stage, for the purposes of this Preliminary Response only, Patent Owner simply applies Petitioner’s own constructions to show how the Petitioner has not met its burden under 37 CFR § 42.104(b)(4).” Prelim. Resp. 25. For purposes of this Decision and based on this preliminary record, we determine that no claim term requires express construction at this stage of the proceeding. E. Patentability Challenges” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,176,848 - PTAB · Nov 7, 2024 · IPR2024-00717 · APJ Kevin C Trock · IPR · Institution
The Board instituted review of claims 1–11 on all four §103 grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“On September 12, 2024, with the Board’s authorization, Petitioner filed such a stipulation. Paper 8. Petitioner’s stipulation reads: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00717, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.. Id. Given that the language of Petitioner’s stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. B.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with camera technology.” Pet. 5. Petitioner’s declarant, Mr. Guidash, provides supporting testimony as to the level of ordinary skill in the art. Ex. 1003 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’757 patent. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Moreover, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, one cannot show non-obviousness by attacking references individually where, as here, the This is particularly relevant here, where Petitioner explains that its rationale to combine the teachings of Chinn, Takahashi, and EX-V7 derives, in part, from the teachings of the references themselves. See, e.g., Pet. 10–11 (“Moreover, both Chinn and Takahashi disclose delayed image capture after a voice command is given,” and therefore, a person of ordinary skill in the art “would have been motivated to look at Takahashi and EX-V7 to improve Chinn, and vice-versa.”). Based upon the current record, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that a person of ordinary skill in the art at the relevant time period would have had a reasoned basis for combining the teachings of Chinn, Takahashi, and EX-V7 in the manner proffered and would have had a reasonable expectation of success in that endeavor.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,757 - PTAB · Nov 7, 2024 · IPR2024-00735 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–15 based on the petition’s asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. 35 U.S.C. § 314(a) Patent Owner requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 15. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),10 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 97. The Horn–Baumgartner combination was not considered during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim. We have evaluated all of the parties’ submissions and determine that the record supports institution. This decision to institute trial is not a final decision as to patentability of any challenged claim, or any factual or legal issue underlying patentability. Any final decision will be based on the full record developed during trial. We expressly inform Patent Owner that any argument not asserted in a timely filed Response or another manner permitted during trial shall be deemed forfeited or waived, regardless of whether the argument was presented in the Preliminary Response. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–15 of the ’815 patent is instituted on the grounds set forth in the Petition; and” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science, electrical engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1003 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 4, 2024 · IPR2024-00828 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–14 because the petition showed a reasonable likelihood of prevailing on the asserted obviousness grounds.
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 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 and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1, 2, 4–7, and 9–14 of the ’086 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skilled artisan would have been motivated to combine the relied-on teachings of Rogers and Rosenberg. Pet. 11–15 (citing Ex. 1003 (Nielsen Decl.) ¶¶ 86–91; Ex. 1006, code (57) (Abstract), 3:4–10, 4:15–19, 4:48– 62,7:59–62, Figs. 1, 2A; Ex. 1007, code (57) (Abstract), ¶¶ 30, 49, 50, Fig. 1). With regard to motivation to combine, the Petition provides: Both references are directed to allowing users to input information via touchsurface technology and are analogous art to the ’086 patent. . . . [A] POSITA would have found Rogers and Rosenberg to be compatible because of the technical similarity of their teachings, and a POSITA would have further recognized that Rosenberg’s finger orientation disclosures, applied to Rogers’ graphical passcode disclosures, would facilitate a “natural and intuitive” means of implementing the teachings of Rogers. A POSITA therefore would have been motivated to look to Rosenberg to improve Rogers, and vice-versa. . . . A POSITA . . . would have considered the disclosures in Rosenberg and been motivated to modify Rogers’ “large fingertip and a small stylus tip” example so that it instead used the “natural and intuitive” finger pad versus finger end distinction discussed in Rosenberg. A POSITA would have found this modification to be a simple substitution of elements well known in the art and would have had a reasonable expectation of success in achieving the benefits disclosed in Rosenberg by making the modification, which involved only routine skill. . . . [A]dding finger end and finger pad touch detection to Rogers would involve no more than applying a known technique (i.e., finger end and finger pad touch detection/distinction as taught by Rosenberg) to a known device ready for improvement (Rogers’ apparatus having “large fingertip and a small stylus tip” capabilities) to yield predictable results (simple to use touch screen interface with multipoint targeting and multi-finger gesturing). . . . It also would have been obvious to combine Rogers with Rosenberg because both references disclose touch screen interfaces that detect a contact area of a finger. . . . A POSITA would have considered Rosenberg’s disclosures and been motivated to modify the “graphical passcode” features of Rogers so that the disclosed device is capable of detecting information input by a pad or end of a finger, because it would provide a “generally easily distinguishable” basis upon which to program the device disclosed in Rogers to detect a “measurable parameter” based on “contact area.” A POSITA would have further recognized that these features of Rogers and Rosenberg could be successfully combined because both references teach a “calibration” mode in which the user trains the device to recognize a specific range of input parameters that allows for some variation in input while remaining within acceptable tolerances. . . . A POSITA would have had a reasonable expectation of success in modifying Rogers in this manner for at least the same reasons.” slip op. at 32
- Other 314aDecided for petitioner
“The Guidance Memo provides that “the PTAB 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.” Guidance Memo 7. Petitioner has presented such a stipulation in this proceeding. Paper 8 (Petitioner’s Sotera Stipulation). Petitioner’s Stipulation states: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 13 Available at http://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00828, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 1. For this reason, we do not exercise our discretion to deny institution under Section 314(a).” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“[a] two-part framework: (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 14 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. 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, IPR2019-01469, Paper 6 at 8.” slip op. at 45
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,982,086 - PTAB · Oct 1, 2024 · IPR2024-00692 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–9 and 11–21 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Kane and Beckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). 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 response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Beckley. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Beckley, as Petitioner proposes.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As explained by the Federal Circuit, [f]or objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“previously were presented to the Office.”8 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Sep 26, 2024 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 under all asserted grounds, finding a reasonable likelihood that Koebler anticipates claims 1, 15, and 16 and that the asserted obviousness grounds succeed for at least some claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“require the Enumerated Current Conditions to be determined by analyzing data from the Enumerated Sensors, and it is this claimed invention for which the specification must provide written description support. 35 U.S.C. §§ 112(a), 120. Although, as discussed above, the claim requires only one Enumerated Sensor and one Enumerated Current Condition, it additionally requires that data from the sensor be analyzed to determine the current condition. Thus, to support the full scope of the claims, Koebler must disclose that each of the Enumerated Current Conditions is determined by analyzing data from one of the Enumerated Sensors. Although Petitioner asserts that Koebler does not provide written description support for ten of the Enumerated Sensors (see Pet. 10–11), Petitioner focuses its arguments on three of the current conditions (moisture, an amount of vibration, and traction) (see id. at 15–20), and we likewise focus our analysis on these three current conditions. Petitioner’s arguments for these three current conditions are substantially identical, including that Koebler does not teach or suggest using data from an Enumerated Sensor to determine each of the three current conditions. See id. at 15–19.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“Thus, at this preliminary stage of the proceeding and based on the present record, we determine that Petitioner has established a reasonable likelihood that Koebler does not provide written description support for the claims of the ’616 patent. For completeness, we note that we find Petitioner’s arguments that Koebler does not provide verbatim or synonymous disclosure of the words “moisture,” “vibration,” or “traction” (see, e.g., Pet. 15–16) unavailing, as there is no requirement for verbatim or synonymous disclosure in the prior application. PowerOasis, 522 F.3d at 1306; Purdue Pharma, 230 F.3d at 1323. Similarly, there is no requirement for “inherent disclosure” of the recited current conditions. See, e.g., Pet. 16–17. Rather, as explained above, the relevant inquiry is whether the application relied upon (here, Koebler) reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Thus, under § 325(d), the Board uses the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of [the] challenged claims. Id. at 8.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,850,616 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Aug 8, 2024 · IPR2024-00545 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that Tesla would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only 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(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have had “a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering (including automotive engineering), civil engineering (transportation 2 At this stage of the proceeding, the parties have not directed us to any such objective evidence. systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems.” Pet. 2–3. Petitioner contends that “[a]dditional education could substitute for professional experience, and vice versa.” Id. at 3 (citing Ex. 1003 ¶¶ 1–19, 24–26; Ex. 1004). Patent Owner “does not dispute” Petitioner’s definition of the level of ordinary skill. Prelim. Resp. 5. We find Petitioner’s definition to be consistent with the problems and solutions disclosed in the patent and prior art of record, and adopt it as our own for purposes of this Decision. See, e.g., In re GPAC, 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“On this preliminary record, we do not agree with Patent Owner’s interpretation of “route.” Although we acknowledge that the ’161 patent states that “[t]he route is determined based on the current position of the vehicle and a final destination position” (Ex. 1001, 11:31–32), elsewhere the ’161 patent appears to allow for variability in the definition of “route.” To the contrary of Patent Owner’s assertion, the ’161 patent explains that “[t]he route used by the power management device typically includes a starting position . . . , an ending position, . . . , and any intermediate positions between the initial and the final positions.” Id. at 13:40–44 (emphasis added). Therefore, we preliminarily find that the ’161 patent contemplates routes that, although not typical, do not include an ending position. Thus, Neiss’s prediction horizon appears to qualify as a “route” as the term is used in the ’161 patent.4 We encourage the parties to provide further briefing on the construction of “route” during the trial. Moreover, even if we were to adopt it, it appears that Neiss’s last prediction horizon of a journey would satisfy Patent Owner’s proposed interpretation. Neiss discloses, As the vehicle proceeds, an onboard computer iteratively calculates and stores in a memory vehicle control parameters that optimize the vehicle operating cost function for a predetermined distance (referred to as a “Prediction Horizon”) along the route ahead of the vehicle. The optimal vehicle control parameters for the Prediction Horizon are then stored in a memory and continuously updated and replaced by new data as the vehicle (and hence the Prediction Horizon) moves along, thereby adjusting the “optimal” control parameters to reflect actual vehicle historical operating experience during the journey. Ex. 1005 ¶ 15 (emphasis added). As the prediction horizon shifts as the vehicle travels along its journey, the last prediction horizon of the journey 4 We also note again that this is a preliminary finding, as the Petition acknowledges (“[a]lternatively/additionally) that Neiss’s prediction horizon relates to “portions of an overall route ahead of the vehicle as the vehicle travels the overall route between a starting point and a final destination.” Pet. 14 (citing Ex. 1005 ¶¶ 1, 15, code (57); Ex. 1003 ¶ 61). would include the final destination and, thus, qualify as a “route” according to Patent Owner’s proposed interpretation.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner’s argument that Clapper’s teachings are “incompatible” with Schramm appears to be an improper non-analogous art argument, for which Patent Owner does not address the well-established tests. See In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). Patent Owner’s arguments also appear to suggest that it would not be obvious to modify Schramm’s system to operate at various speeds because Schramm does not disclose operating at multiple speeds. Patent Owner’s arguments are not in-line with obviousness, which asks “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d at 1581 (emphasis added) (internal quotations omitted). Moreover, Schramm discloses that the operator inputs the desired average speed, at least suggesting that the speed of Schramm’s vehicle does vary. Ex. 1009, 5:14–16, 7:24–26.” slip op. at 27
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,972,161 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Aug 5, 2024 · IPR2024-00499 · APJ Brent M Dougal · IPR · Institution
The Board instituted IPR on claims 1–17, finding a reasonable likelihood that Tesla would show at least claim 1 obvious over Kudo-325 and Kudo-066.
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 prior art. See 35 U.S.C. § 314(a).” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Id. at 13, 17. Petitioner asserts that a person of ordinary skill in the art (“POSITA”): would have had a bachelor’s degree in electrical engineering, computer engineering, mechanical engineering, civil engineering (transportation systems), physics, or a related field, and at least four years of experience (or the academic equivalent) in the field of transportation systems. Additional education could substitute for professional experience, and vice versa. Pet. 3 (citing Ex. 1003 ¶ 27). Patent Owner does not directly address or contest Petitioner’s level of skill. See generally Prelim. Resp. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’002 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 5
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The ’002 patent does not appear to expressly describe detecting a pattern. It does include one section describing “statistical destination logic.” Ex. 1001, 11:50–13:63; see also id. at 20:44–57 (referring back to the prior trip to historical data to determine the probability of one’s destination. Id. at 11:50–13:63. In the only disclosed embodiments, the pattern would appear to be established by the current trip data, because this pattern is what is compared to the historical data. Id. Patent Owner argues that “[t]he claims require more than the mere use of a sensor data to locate matching entries in a database” (Prelim. Resp. 10, 16–17); however, Petitioner’s understanding of the claims is consistent with the only disclosed embodiments in the ’002 patent related to detecting a pattern and predicting a destination3 (see Ex. 1001, 11:50–13:63, 20:44–57). Thus, based on the current record we determine that Petitioner’s position is consistent with what one of skill in the art would understand the claims to require in view of the teachings of the Specification.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Analogous artInstituted
“For the reasons expressed below, we determine that Petitioner has established a reasonable likelihood of succeeding in showing that at least claim 1 is unpatentable.” slip op. at 6
Claim construction§ 103 obviousnessPatents in suitUS 10,829,002
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.