- ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 5, 2024 · IPR2024-01023 · APJ Karl D Easthom · IPR · Institution
The Board instituted IPR on claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all petitioned grounds because Roku showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have jurisdiction under 35 U.S.C. § 314, which provides that an 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.” Under § 314, the Board may not institute review on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359– 60 (2018). If the Board institutes a review, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Upon consideration of the Petition, the Preliminary Response, Reply, Sur-Reply, and the evidence of record, for the reasons set forth below, we conclude Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one challenged claim in the ’236 patent. Accordingly, we institute an inter partes review of claims 32–34, 38, 39, 66–68, 72, 73, 130, 131, 134, and 135 on all grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).1” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“on claim construction and disregard everything else.8 The parties direct our attention in particular to the proper construction of an “independent” second root of trust in context of the recited claim limitation: “a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust.” We refer to this disputed claim limitation hereafter as the “independent authentication” limitation. Petitioner proposes the following construction: “authentication processes that are performed by independent roots of trust—i.e., roots of trust with trust determinations that are independent of the outcome of the other.” Reply 3 (citing Ex. 1001, 8:16–38 (“the secondary CA server follows rules (e.g., CA messages) of the primary CA server to manage a secondary subscriber management system”)); see also id. at 5 (“‘independent’ . . . identifies how the first and second roots of trust” “arrive at their first and second authentication determinations, without relying on the output of the other”). Petitioner also asserts that Patent Owner’s patentability argument hinges on a construction of “independent” such that “‘independent’ as used to modify the first and second roots of trust must be construed as independently controlled,” which Petitioner asserts is inconsistent with the ’236 patent claim language and specification. Id. at 1. Patent Owner, for its part, denies that it is advocating for a construction where the two roots of trust are “independently controlled.” Sur-Reply 3. Patent Owner does not offer a construction of the “independent authentication” limitation, citing an unilluminating description where “the client authentication in the secondary security domain is completely independent from the client authentication in the 8 The parties are reminded of the Board’s sanction authority for non-compliance. 35 U.S.C. § 316(a)(6); 37 C.F.R. § 42.12(a)(1). primary security domain.” Id. at 4 (citing Ex. 1001, 8:33–35). On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 130[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 32 and 66 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (stating “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir.2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir.1991)). We find that, at this stage of the proceeding and based on the present record, Petitioner provides sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - ROKU, Inc. v. Videolabs, Inc.InstitutedPTAB · Dec 4, 2024 · IPR2024-01024 · APJ Brian P Murphy · IPR · Institution
Instituted IPR on claims 48–50, 57, 82–84, 91, 116–118, 125, and 140–142; the petition showed a reasonable likelihood of anticipation by Russ, but not obviousness over Russ.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Anticipation under 35 U.S.C. § 102 requires “the presence in a single prior art disclosure of all elements of a claimed invention arranged as in the claim.” Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010); Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). To anticipate a patent claim under 35 U.S.C. § 102, “a reference must describe, either expressly or inherently, each and every claim limitation and enable one of skill in the art to practice an embodiment of the claimed invention without undue experimentation.” American Calcar, Inc. v. Am. Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 2011) (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009)). “[E]xtrinsic evidence may be considered when it is used to explain, but not expand, the meaning of a reference.” In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (citing Scripps Clinic & Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576–77 (Fed. Cir. 1991)). We conclude that, at this stage of the proceeding and based on the present record, Petitioner has provided sufficient evidence and argument to establish a reasonable likelihood that Russ anticipates the challenged claims of the ’236 patent.” slip op. at 11
- Parallel petitionsOther
“5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be 5 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3. Petitioner states that it filed three parallel IPR petitions challenging three different claim sets of the ’236 patent “solely for word count purposes that preclude all claims from being challenged in [a] single petition,” “there is no duplicative overlap of the same claims across petitions,” and there is a “need to set forth constructions for claim language invoking § 112 ¶ 6.” Id. at 1–2 (citing Consol. Tr. Pr. Guide, 59–61). Patent Owner does not address Petitioner’s Notice. We agree with Petitioner’s reasoning and decline to exercise our discretionary denial authority under 35 U.S.C. § 314(c). 6 Contrary to Patent Owner’s contention that Petitioner does not show that Dr. Wasilewski “qualifies as a POSITA,” his physics degree, background, and experience, in systems involving multi-media content distribution and management and/or related fields, including as an inventor of over 50 patents in fields that include encryption, MPEG systems, and transfer of digital content, including Russ (Ex. 1005), along with extensive engineering experience in related fields, is more than adequate on this preliminary record to qualify Dr. Wasilewski as an artisan of ordinary skill. Compare Prelim. Resp. 5, with Ex. 1003 ¶¶ 4–19 and Ex. 1004. considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). “These factors are not exhaustive but are merely a guide to determining the level of ordinary skill in the art.” Daiichi Sankyo Co. v. Apotex, Inc., 501 F.3d 1254, 1256 (Fed. Cir. 2007). There is uncontested evidence in the record before us that reflects the knowledge and experience of a POSA. We adopt Petitioner’s proposal for purposes of institution, which the prior art of record supports. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we determine that no explicit construction of claim terms is necessary to determine whether to institute an inter partes review in this case. See, e.g., Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“[C]laim terms need only be construed ‘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)). The parties are ordered to propose and support a specific plain meaning or other construction of the “independent authentication” limitation in their briefs, with reference to the following claim language: 140[c.ii] the conditional access server authenticates clients of the conditional access server through a second authentication process which is independent of the first authentication process and wherein the second authentication process uses a second root of trust which is independent of and different than the first root of trust. The parties are ordered to analyze the relevant claim language, and cite to the specification and prosecution history in support of their claim construction where applicable, including the language of counterpart “independent authentication” limitations recited in claims 48, 82, and 116 if there are material differences. The parties are further ordered to address the question of whether an “independent” “second authentication process” and “second root of trust” requires a conditional access server that manages a secondary subscriber management system where a “client” of the conditional access server does not subscribe to the primary subscriber management system. See Ex. 1001, 8:3–38 (e.g., “authentication methods used by the secondary CA server in the secondary subscriber management system are independent from those used by the primary CA server”).” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 8,291,236 - PTAB · Nov 26, 2024 · IPR2024-00932 · APJ Mary C Hoffman · IPR · Institution
The Board instituted IPR on all challenged claims, 1 and 4–20, and all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Prusik and over Prusik with Vaillant.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), 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 1 of the claims challenged in the petition.” Based on the current record and for the reasons explained below, Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’818 patent. We institute this inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in computer science, electrical engineering, systems engineering, biomedical engineering (or a related or equivalent field), and two . . . years of experience researching, developing, designing and/or evaluating embedded systems, graphically encoded icons, or diagnostic systems that provide dynamic information,” and that “less or different education but more relevant practical experience, or vice versa, may also meet this standard.” Pet. 7. Petitioner also asserts that “[a] POSITA may be part of an interdisciplinary team with others having the relevant experience set forth above,” and that the prior art evidences the level of skill in the art. Id. (citing Ex. 1003 ¶¶ 16–21). Patent Owner did not file a Preliminary Response and thus does not currently dispute Petitioner’s level of ordinary skill in the art. For purposes of this Decision, we find Petitioner’s formulation sufficient at this stage, except that we need not decide at this stage whether a POSITA would have been “part of an interdisciplinary team with others having the relevant experience,” or who would have been part of such a team. With or without that provision, Petitioner’s proposal appears at this stage to be generally consistent with the technical background described in the ’818 patent, and with the prior art of record. See Ex. 1001, 1:31–2:43; see also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and need for testimony is not shown” (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985))). To the extent that we may need to further characterize the level of ordinary skill, the parties may develop this issue at trial.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on the teachings cited by Petitioner, discussed above, we preliminarily determine that Petitioner has sufficiently demonstrated that Prusik teaches or suggests each of the limitations 8pre–8e to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 8 is unpatentable.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“provide temperature exposure information to a user for product preservation purposes,6 and that a POSITA would have been motivated to combine Prusik with Vaillant’s marketing management system to systematically and automatically control a product whose preservation in a distribution circuit depends on the temperature. Pet 34–35 (citing Ex. 1006, 6:58–51; Ex. 1003 ¶ 174). For example, according to Petitioner, a POSITA would have been motivated to modify Prusik’s system with Vaillant “to prevent the sale of a 6 Petitioner indicates that Vaillant is cited on the face of the patent issued from Prusik (Ex. 1022). Pet. 34. product where the dynamic data in the two-dimensional barcode indicates that the product has been exposed to a temperature exceeding a predetermined threshold.” Pet. 36 (citing Ex. 1003 ¶ 177). Petitioner also contends that “applying a sale acceptance/rejection functionality to Prusik’s barcode reader is a mere application of a known method of product handling and processing to Prusik’s system to achieve the predictable result of preventing sale of products that have been exposed to hazardous or improper environmental conditions.” Pet. 35–36 (citing Ex. 1003 ¶ 176). Based on the forgoing, we determine that Petitioner has provided sufficient evidence and reasoning to demonstrate that the combination of Prusik and Vaillant would have rendered claim 1 obvious to an ordinarily skilled artisan. Thus, at this stage, we determine that Petitioner is reasonably likely to prevail in showing that claim 1 is unpatentable.” slip op. at 18
§ 103 obviousnesscites GrahamPatents in suitUS 11,392,818 - PTAB · Oct 28, 2024 · IPR2024-00714 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–20 on all asserted grounds, finding a reasonable likelihood that Valve would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user.” Prelim. Resp. 13 (citing Ex. 2001 ¶ 33). Patent Owner also argues that formal education could substitute for practical experience, and vice versa. Id. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’907 patent. See, e.g., Ex. 1001, 1:14–62. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Petitioner’s proposed level of skill for this decision because it is sufficiently persuasive to meet Petitioner’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we disagree with Patent Owner that the term defining in claim 1 requires that the recited position and range information must be user-modifiable. Although claims 8 and 15 (not claim 1) recite a “program comprising instructions for . . . defining position and range information,” nothing in these claims explicitly requires that this program has any interaction with a user. Ex. 1001, 14:24–25, 14:64–65. Also, although the ’907 patent disclosure refers to computer architecture components for rendering a haptic effect within a boundary range, Patent Owner has not pointed to any disclosure in the ’907 patent suggesting that range settings must be user-modifiable. The ’907 patent does refer to “trigger data” that is “based on user input data,” but this trigger data appears to be collected by firmware, suggesting that the user’s involvement in creating trigger data consists of simply pulling or pushing the triggers of the controller. See Ex. 1001, 7:1–6, 8:10–16 (trigger data is “received from [the] controller . . . by peripheral firmware”), 8:58–65 (trigger data is obtained from potentiometers in the controller and sent to peripheral firmware), Fig. 3 (showing “[t]rigger data” 323 as part of peripheral firmware 320). Further, the ’907 patent discloses that the primary and secondary ranges at least “may be fixed or variable.” Ex. 1001, 5:29–30. This suggests that an embodiment in which all the range information is fixed (i.e., unalterable by a user) would be within the scope of the claimed invention. As to Patent Owner’s argument that defining would exclude something that is pre-defined, Patent Owner provides no evidence of this in the ’907 patent, its prosecution history, or extrinsic evidence. We find the proposition that something “pre-defined” is not “defined” illogical, and we” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,627,907 - PTAB · Oct 21, 2024 · IPR2024-00697 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 on all petitioned grounds, finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim. Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 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 › Intrinsic evidence (Phillips canons) › Preamble limiting or notPreamble limitingDecided for patent owner
“Patent Owner contends “the preamble of claim 1 is limiting based on Petitioner’s assertion in the District Court and based on the District Court’s order.” Prelim. Resp. 6. Patent Owner also contends “the District Court agreed with Patent Owner and ordered that the ‘control component’ term has its plain and ordinary meaning and is not subject to means-plus-function treatment.” Id. Patent Owner finally contends “there is no need for the Board to make claim construction determinations about Section 112, Paragraph 6 to decide institution.” Id. As to the preamble, we agree, for purposes of this decision, that claim 1’s preamble is limiting. The parties agreed that this preamble is limiting in the District Court case. Dist. Ct. Const. 10.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed board ownTerm construed patent owner constructionMixed
“As to the “driving component” recitation, the parties agreed to a construction in the District Court case. Dist. Ct. Constr. 11. For purposes of this Decision, we adopt the parties’ agreed construction. Pet. 6. The parties agreed the “driving component” term is a means-plus-function term. Dist. Ct. Constr. 11. The function is “drives the moveable component in each of two opposite directions.” Id. Corresponding structure includes “coils 420, 514, 626, 1202, 1204, 1302, 1304, 1412, 1414, 1510 (also shown in Figs. 16–17); electromagnets shown in Figs. 10–11; and equivalents thereof.” Id. As to “control component,” the District Court held that the term is not a means-plus-function term because the claim defines the term structurally by requiring a “microprocessor,” “control program,” and “switch.” Dist. Ct. Constr. 17–22. For purposes of this Decision, we agree with the District Court that means-plus-function treatment does not apply to the “control component” recitation because structure in claim 1 defines the component. Given the context provided by claim 1 as a whole, a person having ordinary skill in the art would have understood the “control component” as identifying a specific structure (requiring a microprocessor, control program, and switch as claim 1 recites). See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (holding that the means-plus-function inquiry depends on “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for a structure”).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“With respect to other claim terms, Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim based on the ordinary and customary meaning of these terms. Thus, no other claim terms require express construction for purposes of this Decision. See, e.g., Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - PTAB · Oct 21, 2024 · IPR2024-00698 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5 under all six asserted § 103 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
“Under 35 U.S.C. § 314(a), 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.” 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 of the ’767 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“On June 21, 2022, the Director of the U.S. Patent and Trademark Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),7 which states, among other things, that “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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 25, 2024, submission, Petitioner has stated that “[Petitioner] will not pursue [in the related litigation] the same invalidity grounds raised (or any grounds that could have been raised) [in this IPR].” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). In view of this stipulation, we do not exercise discretion to deny institution.” slip op. at 12
- Parallel petitionsDecided for petitioner
“Second, we determine both petitions, at this stage, to be strong. Patent Owner has not refuted the obviousness merits of either Petition, and, at this stage, we do not independently identify a flaw in Petitioner’s analysis. Third, we agree with Petitioner that it could not have reasonably addressed both the Shahoian and Izumi theories in one petition. Petitioner’s Notice 4. At the time Petitioner filed its petitions, Petitioner was reasonably uncertain as to whether or not the term “control component” is a means-plus-function term. If means-plus-function, Petitioner was reasonable in taking extra effort to address the term. Petitioner did not have space in one Petition to address both a means-plus-function possibility while also addressing both Shahoian and Izumi theories. Fourth, granting both Petitions will not place an undue burden on Patent Owner. As Patent Owner emphasizes, only five claims are at issue. Resp. 19–20. Moreover, we indicate, in this decision, our preliminary agreement with the U.S. District Court for the Western District of Texas that “control component” should not be construed as means-plus-function. See Section III(C), supra. Based on this indication, we hope that the parties may be able to narrow the focus of this proceeding at trial. We determine that these four reasons, along with all other circumstances specific to this particular matter, cumulatively weigh against exercising discretion to deny institution for this particular matter.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art (POSITA) would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the degree. Pet. 4 (citing Ex. 1003 ¶ 30–31). Patent Owner contends a POSITA would have had (1) a bachelor’s degree in electrical engineering, mechanical engineering, or a comparable field of study, and (2) at least two years of professional experience with electro-mechanical control systems, or other similarly relevant industry experience. Prelim Resp. 3. Additional relevant industry experience may compensate for lack of formal education or vice versa. Id. Patent Owner further contends this is similar to Petitioner’s POSITA contention. Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’767 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§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,093,767 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00807 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 2 and 3 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner states that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00807 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00807 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all remaining challenged claims, claims 2 and 3, and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that a person of ordinary skill in the art (POSITA), would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“For purposes of this proceeding, the parties agree that independent claim 2 includes means-plus-function limitations under 35 U.S.C. § 112 ¶ 6.9 Pet. 2–6; Prelim. Resp. 7–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the 9 As indicated above, statutory citations are to the pre-AIA version of 35 U.S.C. § 112. See supra note 1. recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; Prelim. Resp. 7–14. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,860,337 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00806 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–8, 14–17, 19, and 20, finding a reasonable likelihood of unpatentability over the asserted §103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner has stated that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00806 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. grounds raised (or any grounds that could have been raised) in IPR2024-00806 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,941,830 - PTAB · Sep 25, 2024 · IPR2024-00582 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–6, 14–16, and 19 on all asserted grounds, finding a reasonable likelihood Valve would show at least one claim unpatentable based on Pratt.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)). A claim is unpatentable under § 103 if the differences between the claimed subject matter and the prior art are “such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). When a ground in a petition is based on a combination of references, we consider “whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 21. The parties’ proposed levels of ordinary skill appear to be substantially similar, supported by testimonial evidence, and consistent with the asserted prior art and the types of problems and solutions in the ’738 patent. See, e.g., Ex. 1001, 1:6–61. Although we discern no difference in the outcome of this decision from choosing one over the other, we adopt Valve’s proposed level of skill for this Decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION In an IPR, we construe a patent claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). This generally includes “construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. The ordinary and customary meaning of a claim term “is its meaning to the ordinary artisan after reading the entire patent,” and “as of the effective filing date of the patent application.” Phillips, 415 F.3d at 1313, 1321. Neither party argues that we should construe any particular claim terms explicitly. Pet. 8; Prelim. Resp. 21. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of claim language is disputed, we discuss it below in the context of the prior art. 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 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show that a claim is anticipated under 35 U.S.C. § 102, the challenging party must demonstrate that each and every claim element, arranged as recited in the claim, is found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We consider prior art references “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,175,738 - PTAB · Sep 25, 2024 · IPR2024-00646 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–18 and all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Al-Shyoukh and Ivanov.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“and Trademark Office under 37 C.F.R. § 42.4(a), we may institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’074 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Chen’s testimony, Petitioner argues that a person of ordinary skill in the art would have had “a Master’s Degree in Electrical Engineering, or alternatively a Bachelor’s Degree in Electrical Engineering and two years of experience working on analog circuit design.” Pet. 9 (citing Ex. 1002 ¶ 38). At this stage, Petitioner’s argument is uncontested, and it appears to be supported by the types of problems and solutions in the ’074 patent. See, e.g., Ex. 1001, 1:25–2:44. Thus, we adopt the formulation preliminarily for this decision.” slip op. at 9
- Prior constructionPrior construction adoptedDecided for petitioner
“claim constructions that correspond to constructions it expects Patent Owner to assert. See Pet. 20 n.2. After Patent Owner filed its Preliminary Response, Petitioner notified us that the district court in the parallel district court litigation issued a claim construction order interpreting two terms relevant to this proceeding, as shown below: Claim Term District Court’s Construction” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for petitioner
“limitation was indefinite because it was subject to 35 U.S.C. § 112 para. 6 and the ’074 patent failed to disclose sufficient corresponding structure. See Ex. 3001, 9. However, in its Petition, Petitioner adopts what it understands to be Patent Owner’s claim-construction in the parallel proceeding: “that 1[d] is not a means-plus-function element under [§ 112 paragraph 6], and to the extent it is, the claimed function is to enable/disable the biasing circuit for reducing standby current, and the corresponding structure is the signal input line at node M in Figure 3.” Pet. 21–22. Assuming that limitation 1[d] does not invoke § 112 paragraph 6, Petitioner argues that “Al-Shyoukh discloses inputs from a biasing circuit into its LDO but does not specify a design,” but Ivanov discloses a specific design for implementing the recited enable/disable function, and a person of ordinary skill in the art would have had reason to incorporate Ivanov’s design into Al-Shyoukh’s LDO. Pet. 22–26 (citing Ex. 1004, 1732; Ex. 1005, 1:6–18, 3:43–49, 3:54–63, 4:26–33, 5:19–25, 6:7–22, 6:47–54, Figs. 1, 2; Ex. 1002 ¶¶ 60–70). Alternatively, if limitation 1[d] invokes § 112 paragraph 6 and Patent Owner is correct that the corresponding structure is the signal input line at node M in Figure 3 of the ’074 patent, Petitioner argues that this structure is identical to Ivanov’s input line 8. Pet. 26 (citing Ex. 1001, Figs. 1, 3; Ex. 1002 ¶ 69).” slip op. at 24
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,471,074
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.