- PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: 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 working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. 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 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have 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 working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and 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).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · May 10, 2024 · IPR2024-00031 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 15–20, 24, 26, and 27 on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 patent specification and 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).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - PTAB · May 8, 2024 · IPR2024-00080 · APJ Bach V Hoang · IPR · Institution
The Board instituted IPR on claims 1–21 and all asserted grounds after finding a reasonable likelihood that claim 1 would be obvious over Schneider.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of Inter Partes Review Because we are persuaded that Petitioner has shown a reasonable likelihood of prevailing in showing that the subject matter of claim 1 would have been obvious over Schneider, we institute inter partes review of all claims and all challenges raised in the Petition. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1356 (2020) (35 U.S.C. § 314 “simply requires [the Director] to decide whether the petitioner is likely to succeed on ‘at least 1’ claim. Once that single claim threshold is satisfied, it doesn’t matter whether the petitioner is likely to prevail on any additional claims; the Director need not even consider any other claim before instituting review.”); 37 C.F.R. § 42.108(a).” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“35 U.S.C. § 314(a) to deny institution in deference to the two co-pending district court infringement litigations. See Pet. 4. In support, each Petitioner entity (Dropbox, Inc. and Microsoft Corporation) “stipulates that, if the Board institutes IPR, it will not pursue in its parallel district court proceeding the grounds raised, or which reasonably could have been raised, in” the Petition. Id. Petitioner asserts this stipulation means “the PTAB will not discretionarily deny institution in view of parallel district court litigation.” Id. (quoting USPTO Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 at 3, 7). Patent Owner does not address discretionary denial in its Preliminary Response. We do not exercise the authority to discretionarily deny institution.” slip op. at 36
- Skill levelSkill level petitioner adoptedDecided for petitioner
“held a bachelor’s degree in computer science, electrical engineering, computer engineering, or a closely related field, and one or more years of experience in the design and development of file management, restoration, and archival systems.” Pet. 13–14 (citing Ex. 1004 ¶¶ 29–32). Petitioner further asserts “[m]ore education, e.g., a Master’s or PhD could compensate for a lack of work experience and vice versa.” Id. Patent Owner does not dispute this assessment. See Prelim. Resp. 9 (“Patent Owner does not offer a competing definition at this time, because even under Petitioner’s proposed definition the Petition fails to present a reasonable likelihood of success.”). For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’850 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party proposes any claim terms for construction. Petitioner states it “appl[ies] the plain and ordinary meaning of all claim terms.” Pet. 14. Patent Owner states it “does not believe any claim constructions are necessary based on the arguments presented by Patent Owner at this time.” Prelim. Resp. 26. We conclude, at this stage, that it is not necessary to address the construction of any claim terms or phrases. 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
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 10,585,850 - PTAB · May 8, 2024 · IPR2024-00079 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–6, 8–20, and 23–31 on both asserted obviousness grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have reviewed the preliminary record, and we conclude Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions at least for claim 1. First, we summarize the disclosures of Kenley and Long, then we consider the parties’ opposing contentions concerning the challenged claims.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 13, 18. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 13–15, 18; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather 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). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–23. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., 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. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,218,348 - PTAB · May 8, 2024 · IPR2024-00078 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–6 and 8–11 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least claim 1 over Kenley and Long.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Petition, to justify institution of review, must demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. See 35 U.S.C. § 314(a). Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that the challenged claims are unpatentable, considering all grounds in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We conclude Petitioner has explained with supporting evidence how the combination of Kenley and Long would have motivated a person of ordinary skill in the art to practice the invention of claim 1 with a reasonable expectation of success and without hindsight, sufficiently to justify institution of review. In particular, on this record, we conclude a person of ordinary skill in the art would have been motivated to modify Kenley’s process of backing up files, by triggering the creation of an archive file whenever a file is modified using three successive backup memories per the teachings of Long. See Pet. 19, 24–25. Dr. Maier testifies in support that this would have been done to improve the reliability of Kenley’s file archiving process, by avoiding the potential loss of data created in between Kenley’s archiving of files at predetermined time intervals. See Pet. 19–21, 24–25; Ex. 1003 ¶¶ 49–50, 52–53, 58. Patent Owner does not materially dispute the increased reliability benefits achieved by modifying Kenley’s file-based backup process in this fashion, in the present preliminary record. Instead, Patent Owner pre-supposes that Petitioner’s case for obviousness is premised on the bodily incorporation of Long’s sector-based archiving process into Kenley’s file-based archiving process. However, that is not what Petitioner proposes, as summarized in detail above. Moreover, the test for obviousness is not whether the features of one reference (such as Long) may be bodily incorporated into the structure or process of the other reference (such as Kenley), but rather 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). Further, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420–21. On the present record, we discern no reason why a person of ordinary skill in the art would have been deterred from modifying Kenley’s file archiving process to be triggered whenever a file is modified and to use three successive backup memories per the teachings of Long, or would not have expected success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Even considering the merits of Patent Owner’s reliance on Schneider as teaching away as being pertinent to Petitioner’s Ground One, we find on the present record that Schneider discusses various differences between file-based backup processes and sector-based backup processes, including some pros and cons of each approach. See Ex. 1020, 2:23–3:2, 5:8–16, 6:1– 7, 6:18–22, 14:4–9, 24:20–27; Prelim. Resp. 22–24. For example, a sector-based backup is faster and requires less administration than a file-based backup (see Ex. 1020, 2:22–28, 6:18–22, 24:20–22), whereas a file-based backup can be restored more efficiently than a sector-based backup (see id. at 2:28–3:2). We conclude on the present record that Schneider does not criticize, discredit, or otherwise discourage file-based backup processes, as is required for a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Indeed, Schneider expressly recognizes that its methods may be used in connection with file-based backup processes. See Ex. 1020, 11:4–5 (“[T]he present invention can also be implemented as part of the operating system.”), 24:1–19 (“The present invention can be implemented either at the sector (disk) level or as part of an operating system’s filing system at the file level.”).” slip op. at 27
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12, at 13–14, 18–19 (PTAB Dec. 1, 2020) (precedential); Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., 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. Guidance Memo, 3, 7–8. For this reason, we do not deny institution in view of the two co-pending district court infringement litigations.” slip op. at 41
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,473,478 - Lululemon USA Inc. v. Nike, Inc.InstitutedPTAB · Mar 26, 2024 · IPR2023-01460 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR on claims 1–19, finding a reasonable likelihood that claims 1, 10, and 11 are obvious over Dua, Hong, and Lockwood.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“lululemon proposes, and Nike does not dispute, that one skilled in the art would have had “at least a bachelor’s degree in mechanical engineering, textile engineering, or similar technical degree and at least 3 years of experience working with knitted textiles for use in fabric-based articles, including apparel such as footwear.” Pet. 12–13 (citing Ex. 1002 ¶¶ 43–45); see also Prelim. Resp. 9 (“Nike applies lululemon’s proposed level of skill in the art.”). lululemon’s proposed definition is consistent with the problems and solutions in the ’484 patent and prior art of record. Accordingly, for purposes of institution, we adopt lululemon’s definition of the level of skill in the art.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“lululemon asserts that “the plain and unambiguous language of the claim[s] requires that the flat-knitted element having the claimed features must be formed from a flat-knitting process.” Pet. 13–14. Nike agrees with lululemon’s construction of the claims, i.e., “that the flat-knitted element, including the ‘domed, three dimensional structure,’ ‘must be formed from a flat-knitting process.’” Prelim. Resp. 9–10 (quoting Petition 13–14). In doing so, Nike explains that the claims do not cover “a flat knitted element with a three-dimensional structure formed only after the knitting process is complete.” Id. at 10. Thus, consistent with the parties’ reasoning, we construe the claims to require that the “central portion having a domed, three-dimensional structure” be formed during the flat-knitting process, and not afterward.” slip op. at 6
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Based on the current record, we credit the testimony of lululemon’s expert over that of Nike’s expert. lululemon’s expert points to Hong’s explicit disclosure that “knitting directly the 3D shapes can overcome fabric waste and diminish the labour cost inherent to the use of two-dimensional fabrics.” Ex. 1002 ¶ 91 (citing Ex. 1005, 5) (emphasis added). That disclosure clearly teaches or suggests that the 3D shape is accomplished as part of Hong’s flat-knitting process, and not as part of a post-knitting step. Hong makes this clear not only by its title, “The development of 3D shaped knitted fabrics . . . on a flat knitting machine,” but also throughout its description of the flat-knitting process: - “The use of a new electronic flat knitting machine (Shima Seiki SES 122FF) for producing three-dimensional shaped fabrics for technical purposes is described.” Ex. 1005, Abstract (emphasis added). - “This work describes the use of the new flat knitting machines to knit 3D structures.” Id. at 1 (emphasis added). - “It is not difficult to knit a spherical form in the SES 122FF flat knitting machine.” Id. at 4 (emphasis added). - “By exploiting the capacity of this [flat-knitting] machine, it is possible to knit more types of three-dimensional knitted fabrics.” Id. at 6 (emphasis added). Moreover, we find unpersuasive the testimony of Nike’s expert that Hong’s use of a 2D pattern in the knitting process necessarily means that the article being knitted is a 2D article as opposed to a 3D article. See Ex. 2002 ¶¶ 43–45. To the extent Hong uses a 2D pattern, it appears to be merely to establish the number of needles and courses to be used in the flat-knitting process that produces the actual 3D article. See, e.g., Ex. 1005, 4 (“it is necessary to start by transferring the three-dimensional concept to a two-dimensional pattern, . . . and then establishing the relation between the number of operating needles and the number of knitted courses.”). Nowhere does Hong appear to mention using the 2D pattern to make a 2D article. Rather, as discussed above, Hong is devoted entirely to describing a flat knitting machine that produces three-dimensional shaped fabric articles. We also find unpersuasive the testimony of Nike’s expert that “[t]he pattern shown in [Hong’s] Figure 5(2) . . . is not sufficient to produce the fully formed shape shown in Figure 5(3),” and, thus, one skilled in the art “would not know how to close the tubes shown in Figure 5(3).” Ex. 2002 ¶¶ 46–47. Hong explicitly states that “[d]uring knitting, the two smaller tubes are separately knitted with two cam systems.” Ex. 1005, 4. That disclosure, at this stage, persuades us that Hong teaches or suggests how its flat-knitting process closes the tubular knitted fabrics depicted in the figures. The parties are free to explore this issue further at trial.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“In sum, based on the preliminary record, lululemon sufficiently demonstrates that the asserted Dua-Hong-Lockwood combination teaches or suggests a “domed, three-dimensional structure” that is formed during the “flat knitting process,” as required by claims 1 and 11. Nike does not dispute lululemon’s showing as to the other elements of claims 1 and 11, nor does Nike dispute lululemon’s reason to combine the asserted references. See Prelim. Resp. 26–30. After reviewing lululemon’s showing, we conclude that the record evidence demonstrates a reasonable likelihood that claims 1 and 11 are unpatentable as obvious over the combined teachings of Dua, Hong, and Lockwood. Thus, lululemon meets the threshold for institution.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,730,484 - PTAB · Feb 23, 2024 · IPR2023-00960 · APJ Kevin C Trock · IPR · Institution
Instituted IPR of claims 1–16 and 18–30 on both §103 grounds because Petitioner showed a reasonable likelihood of prevailing on claim 1 over Shraga and Togami.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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 stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We therefore institute inter partes review as to all of the challenged claims and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Other
“The problem with the parties’ briefing on the trial date issue is that it appears that in the District Court: 1) a stay (Ex. 3006) has been issued in the Fujitsu case (the “pending” May trial date (See Ex. 1032)); 2) NextGen Innovations has filed another patent infringement suit against Nokia (Nokia II) (Paper 17, 2); and 3) Nokia has jointly moved (Ex. 3007) to deconsolidate Nokia I from the Fujitsu case and to consolidate Nokia I with Nokia II, which the District Court has granted (Ex. 3008). Based upon our review of these documents, none of which were provided to the Board by the parties, it appears that there no longer is a pending District Court trial date in May 2004 involving Nokia. Given the lack of notice of these developments by the parties to the Board on an issue that is material to the Board’s Fintiv analysis and the decision in this case, the Board no longer has confidence that the parties have provided the Board with accurate, timely factual information that the Board needs in order to render a fair, just determination of the Fintiv issue and this case. Accordingly, pursuant to 37 C.F.R § 42.11 (d)(3), the parties are Ordered to Show Cause why they should not be sanctioned under 37 C.F.R. § 42.12 (a) (2), (3) and to file briefs addressing this issue, not to exceed 10 pages, within 10 days of this Decision. G.” slip op. at 25
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Section 325(d), the Board uses the following two-part framework: (1) determining 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, determining 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”).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art (“POSITA”) as a person having at least “(1) an undergraduate degree in electrical engineering, computer engineering, computer science, or a comparable field of study and (2) at least two years of experience with optical data communications or a comparable field of work.” Pet. 15 (citing Ex. 1003 ¶¶ 30–31). Petitioner’s declarant, Dr. Paul Prucnal, testifies to substantially the same level of ordinary skill in the art (Ex. 1003 ¶ 30) but adds that a person of ordinary skill in the art “would have been familiar with MSA optical modules, including SFP, XFP, and XENPAK, . . . networking protocols such as Ethernet, and the technologies that enable it, as well as the miniaturization of those technologies into what are commonly known as Small Form-Factor Pluggable (SFP) module” (Ex. 1003 ¶ 31). In its Preliminary Response, Patent Owner does not dispute the Petitioner’s description of a person of ordinary skill in the art. See generally Prelim. Resp. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’754 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Prucnal. See Ex. 1003 ¶¶ 30–31. We agree Petitioner’s assessment of a person of ordinary skill for purposes of this Decision, with the exception of the qualifier “at least,” to keep the description from being vague and extending to a level reflecting that of an expert. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). C.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,238,754 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Feb 23, 2024 · IPR2023-01350 · APJ Jon B Tornquist · IPR · Institution
The Board instituted inter partes review of claims 5–14 on all four asserted obviousness grounds, finding a reasonable likelihood that Apple would prevail on at least one challenged claim.
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 the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art, as of the earliest possible priority date for the ’641 patent, “would have held a Bachelor’s degree in chemistry or chemical engineering, with at least 4 years of experience in cell design, electrochemical techniques, and battery materials development.” Pet. 4. Petitioner further contends that a “Master’s Degree can substitute[] for some of the relevant experience,” and “[e]quivalent training with battery specific experience can accommodate other degreed fields.” Id. Patent Owner does not dispute Petitioner’s definition, “except noting that other majors may provide equivalent education and experience designing, testing, and building lithium-ion batteries.” Prelim. Resp. 14. Upon review of the prior art of record and the parties’ arguments, we adopt Petitioner’s unopposed definition of the person of ordinary skill in the art for purposes of this Decision. The parties may further address at trial whether “other majors” should be added to this definition, and whether such a modification would have any impact on the unpatentability analysis in this case.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party contends any terms of the ’641 patent require express construction. Pet. 4–5; Prelim. Resp. 13–14. And, for purposes of this decision, we agree that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“This argument is not persuasive. Contrary to Patent Owner’s arguments, the Federal Circuit has held that “generic” reasons to combine are not inherently suspect, and may reasonably include a desire to make a device “stronger, cheaper, cleaner, faster, lighter, smaller, more durable or more efficient.” See Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 797 (Fed. Cir. 2021) (quoting DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006)). Regardless, Petitioner’s asserted reasons to combine are specific (improved safety and less deterioration after repeated charging and discharging cycles), as is the proposed combination (implementing Sakamoto’s range of ratios for the positive and negative electrode materials in Yamaki’s lithium ion battery). Pet. 9–12. Identification of specific benefits that are tied to specific elements of specific prior art references is sufficient to support an obviousness ground. See Intel, 21 F.4th at 797.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,749,641
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.