- Sierra Wireless, Inc. / Thales Dis Ais Deutschland GmbH v. Sisvel International S.A.Some claims unpatentablePTAB · May 28, 2024 · IPR2020-01099 · APJ Monica S Ullagaddi · IPR · Remand
On remand, claims 5–7 and 10 are unpatentable as obvious over Chen; claim 8 was not shown unpatentable over the asserted grounds.
RulingsRemand decision- RemandOther
“with the Federal Circuit. Paper 53. Petitioner subsequently filed a Notice of Cross-Appeal. Paper 54. The Federal Circuit rendered its Decision on October 6, 2023 (Paper 58) and entered its mandate on November 29, 2023 (Paper 57). In its Decision, the Federal Circuit vacated our conclusion regarding the “means for detecting” limitation recited in claims 5 and 10. Sisvel, 82 F.4th at 1364, 1370. The Court ordered that, on remand, we “must conduct the analysis appropriate for Noah group two, including whether any of the protocols are clearly linked or associated with ‘the function recited in the claim,’[ ] and whether they are ‘adequate structure for performing this function.’” Id. at 1370 (citing Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012)). The Court further held that “the Board should have considered the knowledge of a skilled artisan,” and specifically, Dr. Kakaes’s expert testimony, “to assess whether the protocol name sufficiently discloses an understood algorithm corresponding to the means-plus-function limitation.” Id. at 1369. The Court also held that we “must either (1) determine whether the claim[s] [are] indefinite and then whether such indefiniteness renders it impossible to adjudicate a prior-art challenge on the merits, or (2) resolve the prior art challenge to the patentability of the claims despite the potential indefiniteness of the means-plus-function term.” Id. at 1370. After the Federal Circuit issued its mandate, we ordered the parties to brief these issues including “the supported construction of the ‘means for detecting’ claim term, as well as the attendant patentability issues of indefiniteness and impossibility as relevant to this claim term.” Paper 59, 3. Petitioner filed an Opening Brief on Remand (Paper 63, “Rem. Pet. Br.”). Patent Owner thereafter filed a Response to Petition (Paper 64, “Rem. PO” slip op. at 4
- Skill levelSkill level patent owner adoptedDecided for patent owner
“In its Patent Owner’s Response, Patent Owner states: [A] person having ordinary skill at the time of invention— September 10, 1999—in the relevant art would be one with a bachelor’s degree in electrical engineering or computer sciences and telecommunications networks, along with at least three or more years of practical experience in the field. A combination of more experience in the field and less education or more education and less experience in the field would also suffice. PO Resp. 7 (citing Inst. Dec. 9; Ex. 2001 ¶ 27). In our original Final Written Decision, we determined that: Although there are differences between the contentions of the parties as to the level of ordinary skill in the art, the parties have not informed us of a dispute that needs to be resolved. We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of ordinary skill in the art because the findings and conclusions rendered in this Decision do not turn on either proposed definition. We determine, on this record, that the level of ordinary skill proposed by Patent Owner is consistent with the ’561 patent and the asserted prior art. As such, we adopt Patent Owner’s proposed definition for a person of ordinary skill in the art. Final Dec. 10. Based on our review of the entire record, we are not apprised of nor can we ascertain any reason to deviate from this determination. As such, in this Final Written Decision on remand, we maintain the definition of level of ordinary skill in the art from the original Final Written Decision.” slip op. at 12
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Claim limitations that include the terms “means” or “means for” are presumed to invoke 35 U.S.C. § 112 ¶ 6. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part). Claims subject to 35 U.S.C. § 112 ¶ 6 are construed in a “two-step process,” whereby we “first identify the claimed function,” and then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” Id. at 1351. Accordingly, the rules governing this inter partes review require that Petitioner “identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3). It is well established that “the corresponding structure for a § 112 ¶ 6 claim for a computer-implemented function is the algorithm disclosed in the specification.” Aristocrat Techs. Austl. Pty Ltd. vs. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005)); see also EON Corp. IP Holdings, LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm.”). The Federal Circuit has held that “[t]he specification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah, 675 F.3d at 1312 (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted)).” slip op. at 13
- Expert testimonyPetitioner expert creditedDecided for petitioner
“For example, with respect to the CRC protocol, Dr. Kakaes testifies that “CRCs are often referred to as ‘error detecting codes’ as they are typically used[] to detect whether a received data message is or is not erroneous.” Ex. 1002 ¶ 88. Dr. Kakaes further testifies that [t]o use a CRC, the transmitter runs a polynomial division of the data block (before forward error correcting code has been applied, if any) to calculate a “remainder” consisting of a predetermined number of bits, for example 16, which are also called “parity bits,” or “check bits,” or “checksum bits,” or “CRC bits” that are attached to the block to be encoded and then transmitted, in whichever way it may or may not be encoded, punctured, etc. After reception and channel decoding (recall that means determining the “maximum likelihood” message), the receiver then runs the same polynomial division of the received decoded data block (which includes the parity bits) and, if the result does not match the “remainder,” i.e., the “parity bits” are not consistent with the determined message, the decoded data block “fails” the “check,” i.e., is declared as being erroneous. As it turns out such a determination is never wrong. In other words, the “false negative” rate is 0. Id. (emphasis added). With regard to the ARQ protocol, Dr. Kakaes testifies that “[i]n an ARQ scheme, the receiver automatically requests retransmission of a data packet if it is detected to be erroneous, such as through the use of CRC, as discussed above.” Id. ¶ 91.” slip op. at 20
Patent outcomesUS 6,529,561 mixedClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,529,561 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Petitioner’s stipulation (Ex. 1025) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Western District of Texas Litigation.” slip op. at 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 patent and the prior art of record. 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - Netflix Inc. v. Divx, LLCAll claims unpatentablePTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand
On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.
RulingsRemand decision- RemandDecided for petitioner
“the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29
Patent outcomesUS 8,472,792 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Netflix, Inc. v. Divx, LLCAll claims unpatentablePTAB · Mar 21, 2024 · IPR2020-00511 · APJ Bart A Gerstenblith · IPR · Remand
On remand, the Board held claims 1–3, 5, 6, 10–12, 14, and 15 unpatentable as obvious over the asserted combinations of Chen and Grab-333 with Candelore or Kocher.
RulingsRemand decision- RemandOther
“I. INTRODUCTION This case is on remand from the United States Court of Appeals for the Federal Circuit to address the patentability of claims 1–3, 5, 6, 10–12, 14, and 15 (“the Challenged Claims”) of U.S. Patent No. 9,184,920 B2 (Ex. 1001, “the ’920 patent). Netflix, Inc. v. DivX, LLC, No. 2022-1043, 2023 WL 3115576 (Fed. Cir. Apr. 27, 2023) (nonprecedential). For the reasons discussed herein, we determine that Petitioner has shown, by a preponderance of the evidence, that the Challenged Claims are unpatentable.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“F.2d 86, 91 (CCPA 1978)). As neither party challenges our preliminary finding regarding the level of ordinary skill in the art, we see no reason to disturb that finding. Accordingly, we maintain and reaffirm that one of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in electrical engineering, computer science, or a similar field with at least two years of experience in video encryption and cryptography or . . . a master’s degree in electrical engineering, computer science, or a similar field with a specialization in video encryption and cryptography.” See Inst. Dec. 9–10 (finding the same).” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In the Response, Patent Owner does not propose a construction for any claim term or contest our preliminary findings regarding limitations 1[a] and 1[b]. See generally PO Resp. Accordingly, we maintain and reaffirm our preliminary determinations regarding the meaning of the recited “user encryption key” and “content encryption key.” [Inst.] Dec. 12– 15. Additionally, we need not construe other claim terms to resolve the present controversy before us.” slip op. at 19
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the complete record before us, Petitioner has established, by a preponderance of the evidence, that claims 1, 3, 5, 6, 10, 12, 14, and 15 of the ’920 patent would have been obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 103
Patent outcomesUS 9,184,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,184,920 - Amphenol Corp. v. PPC Broadband, Inc.InstitutedPTAB · Mar 20, 2024 · IPR2023-01363 · APJ Jon B Tornquist · IPR · Institution
Instituted IPR on claims 1, 2, and 10–13 because Petitioner showed a reasonable likelihood of prevailing on at least one challenged claim, including obviousness over Holmberg and Battey.
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 ’483 patent. Accordingly, we institute an inter partes review as to all the Challenged Claims of the ’483 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends claim 1 should be construed to require that “the drop cable retain its external jacket as it is routed internally.” Pet. 10. Petitioner contends this construction differs from Patent Owner’s apparent construction in the district court, “which allows the external jacket to be removed as the drop cable enters the DIB and the fibers routed inside the box without the external jacket.” Id. at 10–11. Patent Owner contends Petitioner’s narrower construction requiring the “drop cable” retain its external jacket is incorrect, but contends “the Board need not resolve this claim construction dispute to deny institution because Petitioner’s proposed Grounds 1–5 are all insufficient under” either party’s construction. Prelim. Resp. 9. Upon review of the parties’ arguments and the prior art of record, we determine that no claim terms require express construction for purposes of this decision. 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.”)). We address below, however, whether the recited cable types themselves constitute claim limitations.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“slack fiber. Prelim. Resp. 33–37. These arguments are not persuasive. First, Petitioner does not propose a bodily incorporation of Battey’s shelf into the device of Holmberg. Rather, Petitioner’s proposed combination retains splice tray 230 of Holmberg and relies on Battey for its disclosure of using a hinge connection for the splice tray. Pet. 40 (asserting that one of ordinary skill in the art “would have found it obvious to modify Holmberg pursuant to Battey, resulting in splice tray 230 moveable relative to main body 216”), 43 (“Such a modification would have been a simple substitution of a hinged connection instead of a fastener.”). Second, although Battey utilizes a fixedly mounted slack basket to store excess cable, we are directed to no disclosure or teaching in Battey that teaches away from using other means of storing slack fiber.” slip op. at 23
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“For the reasons set forth below, we determine that part two of the Advanced Bionics framework has not been satisfied. Thus, we need not address whether part one of the framework is satisfied in view of the alleged cumulative nature of Laporte and Battey.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,008,483 - PTAB · Feb 26, 2024 · IPR2023-01275 · APJ Arthur M Peslak · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 6, and 8 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Clark and Manner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Nonetheless, we give little weight to his testimony on this point because he does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Ex. 2001 ¶ 22. Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’650 patent and the prior art. Our Decision would be not be affected if we were to apply Patent Owner’s definition.” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“C. Mr. Kemnitzer’s Testimony Patent Owner contends that we should give little to no weight to Mr. Kemnitzer’s testimony because his “education and experience is in industrial design, rather than mechanical engineering.” Prelim. Resp. 57 (citing Ex. 1003 ¶¶ 4–6). According to Patent Owner, “[s]uch qualifications are directed more toward aesthetics than hard science,” while “[m]echanical engineering concerns are at the core of certain deficiencies in Mr. Kemnitzer’s analysis.” Id. (citing Ex. 2001 ¶ 58). Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1003 ¶ 5. Thus, on the present record at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner contends that “the ’650 patent is obvious under any reasonable construction of the claims.” Pet. 9. Petitioner points out that it contends in district court that the term “an actuator for controlling the driver” is indefinite for invoking means-plus-function claiming without providing corresponding structure. Id. (citing Ex. 1023, 36–40; Ex. 1024, 28–32). Petitioner, however, adopts Patent Owner’s construction of this term for the purposes of this proceeding—“a mechanism to activate or control equipment, e.g., by use of pneumatic, hydraulic, or electronic signals.” Id. at 10 (quoting Ex. 1012, 3–4). Petitioner also points out that in the district court, the parties’ proposed constructions of “work surface” also differ. Id. Specifically, Petitioner advocates that the term should be construed as “a curved surface at the top of a cart large enough to dispense medication or hold work papers,” while Petitioner characterizes Patent Owner’s position as advocating “for a broader ‘plain and ordinary meaning’ construction. Id. (citing Ex. 1012, 8–9). Petitioner, however, states that it “includes alternate grounds using Gillis to demonstrate how the claims are invalid under either Petitioner or Patent Owner’s construction.” Id. Patent Owner contends that Petitioner fails to expressly adopt or set forth any claim definitions aside from the term “work surface.” Prelim. Resp. 17. Patent Owner, however, contends that the claimed invention is valid under any reasonable construction. Id. Patent Owner also contends that the term “compartment” should be construed as “an enclosed space for containing an item” and that the construction of “work surface” is not dispositive here. Id. at 18–20. We agree with Patent Owner that it is not necessary to construe “work surface” at this stage of the proceeding because the construction of the term does not resolve the present controversy between the parties. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,215,650 - PTAB · Feb 26, 2024 · IPR2023-01274 · APJ Arthur M Peslak · IPR · Institution
Instituted review of claims 3 and 4 on all grounds; the Board found a reasonable likelihood that claims 3 and 4 would be unpatentable as obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314(a). See 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Considering the Petition, the Preliminary Response, Preliminary Reply, Preliminary Sur-reply as well as all supporting evidence, we conclude that the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail in showing at least one claim of the ’668 patent is unpatentable. Pursuant to 35 U.S.C. § 314, we hereby institute an inter partes review of all challenged claims of the ’668 patent on all grounds stated in the Petition. See 37 C.F.R. § 42 (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”); PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1359–60 (Fed. Cir. 2018) (interpreting the relevant statutory provisions, in light of SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner’s argument that Industrial Design does not have a set definition is supported by Dr. Ben-Tzvi’s testimony. Ex. 2001 ¶ 22. Nonetheless, we give little weight to his testimony on this point because it 9 Patent Owner is reminded that arguments may not be incorporated by reference from one document into another document. 37 C.F.R. § 42.6(a)(3). does not disclose the underlying facts or data on which the opinion is based. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Based on the present record, we do not exclude Industrial Design from the definition of the level of ordinary skill in the art, although the parties are free to address this issue further during trial. For the purposes of this Decision, we apply Petitioner’s level of skill in the art because it appears consistent with the problems addressed in the ’668 patent and the prior art. Our Decision would not be affected if we were to apply Patent Owner’s definition.” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Regardless of the precise contours of industrial design, Mr. Kemnitzer testifies that he has “substantial direct experience in designing products that utilize the manufacturing processes, components, and materials of the designs at issue in this matter” and “in designing fully adjustable products for the commercial furniture, computer, and healthcare industries.” Ex. 1004 ¶ 5. Thus, on the present record and at this stage of the proceeding, we decline to minimize the weight given to his testimony for this reason. The parties, however, are free to address this issue further during trial.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We determine that it is not necessary to construe “work surface” expressly at this stage of the proceeding because the construction of the term does not resolve the present controversy between the parties. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,594,668
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.