- PTAB · Dec 12, 2023 · IPR2023-01065 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that the challenged claims would be unpatentable under the stated §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the ’080 patent and all of the asserted challenges to patentability.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner moves for joinder to and consolidation with related IPR proceeding IPR2023-00284 under 35 U.S.C. § 315 and 36 C.F.R. § 42.122(b). Paper 3 (Motion for Joinder). IPR proceeding IPR2023-00284 has been terminated due to settlement. See IPR2023-00284, Paper 16. Thus, there is no proceeding with which to join the present case. Accordingly, Petitioner’s motion for joinder and consolidation is denied.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Additionally, we credit Dr. Vipperman’s testimony that a person of ordinary skill in the art at the critical time would have understood that this disclosure in Ikeda teaches a linear filter. See id. ¶ 132 (citing Ex. 1020, 16– 17, Fig. 2.2; Ex. 1028, 366–367). Dr. Vipperman citation to Ex. 1028 is particularly instructive because the reference explains that a tapped delay line structure, such as that used in Ikeda, is a type of a linear filter. See Ex. 1028, 367. Thus, we are persuaded that Ikeda teaches a linear filter, which results in linear proportionality. Accordingly, at this stage of the proceeding, based on Ikeda itself and the supporting testimony of Dr. Vipperman, we are satisfied Petitioner has shown sufficiently that Ikeda teaches “by a varying linear transfer function between the plurality of combinations of signals, wherein the denoised output signals include less acoustic noise than acoustic signals received at the first and second physical microphones.”” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 19 (citing Ex. 2002 ¶ 26). For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’080 Patent and the prior art of record.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,779,080 - PTAB · Dec 12, 2023 · IPR2023-00910 · APJ Nathan A Engels · IPR · Institution
Instituted IPR on claims 1–6 over all petitioned grounds after finding a reasonable likelihood of prevailing; denied joinder as moot.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an inter partes review, the petitioner must show with particularity why each challenged claim is unpatentable. Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016); 37 C.F.R. § 42.104(b). The burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015).” slip op. at 9
- Other 314aInstitution denied discretionary otherDenied
“Patent Owner argues the Petition should be denied under 35 U.S.C. § 314(a) because (1) “Petitioner’s inability to commit to non-duplicative efforts between the District Court Litigation and this proceeding weighs in favor of discretionary den[ial]” (Prelim. Resp. 59), and (2) Petitioner failed to request a conference call prior to filing its Motion for Joinder (Prelim. Resp. 59–60). Petitioner asserts that no trial date has been set in the parallel district court litigation, which Patent Owner does not dispute. Pet. 55; Prelim. Resp. 59–60. Additionally, the Patent Trial and Appeal Board Consolidated Trial Practice Guide (CTPG) states that “[a] party who files a motion for joinder should arrange a conference call . . . within five business days of filing the motion.” CTPG 76 (Nov. 2019) (emphasis added).8 In light of the termination of the earlier proceeding, Petitioner’s failure to request a conference call is harmless error. Thus, we find Patent Owner’s arguments unpersuasive and decline to exercise our discretion to deny the Petition under § 314(a).” slip op. at 9
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Pet.”) requesting inter partes review of claims 1–6 of U.S. Patent No. 9,445,041 B2 (Ex. 1001, “the ’041 patent”). Petitioner also filed a Motion for Joinder requesting joinder with IPR2022-01548 (Paper 2), but IPR2022- 01548 has since terminated due to settlement (IPR2022-01548, Paper 18). Therefore, we deny the Motion as moot. Patent Owner Advanced Coding Technologies, LLC filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 29. For the purposes of this Decision, we apply Petitioner’s level of ordinary skill, with the exclusion of “at least” in defining the education 6 US 2011/0097059 A1, published Apr. 28, 2011. Ex. 1008. Petitioner refers to “Sekiguchi” as “Seikiguchi.” See, e.g., Pet. 3. level, which would render the definition open-ended and inclusive of persons of expert-level skill.” slip op. at 6
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,445,041 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - PTAB · Oct 31, 2023 · IPR2023-00792 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 11, 12, and 16 because Roku showed a reasonable likelihood of prevailing on the petition’s obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). For the reasons discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“B. Real Party in Interest Patent Owner’s Mandatory Notices do not identify any real party in interest, as required by 37 C.F.R. § 42.8(b)(1). See Paper 4. Patent Owner must provide this information by filing a paper with updated mandatory notices within one month of this decision’s entry.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art requires knowledge in “the field of home and business security,” Petitioner’s expert, Bruce McNair, testifies that he has designed and installed home security, sensor, and alarm systems. Ex. 1003 ¶ 12. Also, Mr. McNair’s experience with wireless communication and cryptographic security systems is also relevant (see, e.g., id. ¶ 10) even if it involved more complex systems because, “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.” Kyocera, 22 F.4th at 1377–78 (emphasis added). Thus, on this record, we disagree with Patent Owner’s argument Petitioner has failed to support its Petition with the testimony of someone who possesses the knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See Prelim. Resp. 49.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, we determine that the differences between the two definitions do not affect our decision to institute. That is, in our analysis below, we apply Petitioner’s proposed definition, but our decision would be the same under Patent Owner’s. If the parties continue to disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,692,340 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00719 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–5, 8–15, and 18 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the alternative Tarrant and Bell ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“in that neither party proposes constructions for any specific claim terms. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, based on our review of the complete record, we maintain and reaffirm that no explicit construction of any claim term is needed to resolve the issues presented by the parties and resolved in this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Dickens’ testimony, proposes that a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(f) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“For these reasons, Patent Owner’s first objective indicia argument is unavailing. Petitioner’s Patent Application Patent Owner argues that Petitioner, in its own U.S. Patent Application No. 13/530,831 (see Ex. 2013, “the ’831 Application”) filed several years after the ’983 patent’s priority date, took positions contrary to and belying Petitioner’s positions in this proceeding. See PO Resp. 2, 71–73. In particular, according to Patent Owner, the ’831 Application “included claims directed to the same coupler-body grounding member/path limitations at issue here,” demonstrating that “five of Petitioner’s own inventors (i.e., [persons of ordinary skill in the art]) understood that a coupler-body grounding member/path was patentable.” Id. (citing Ex. 2013, code (57), Figs. 4, 5, ¶¶ 3, 5, 14, 18, claim 1; Ex. 2014, 4:6–14; Ex. 2015, 3– 6; Ex. 2016, 2); PO Sur-reply 3; Ex. 2001 ¶¶ 190–199. Patent Owner cites Andersen Corp. v. Pella Corp., 300 F. App’x 893, 899–900 (Fed. Cir. 2008), as “finding statements made in the accused infringer’s own patent applications provided objective evidence that the challenged claims were not obvious.” PO Resp. 73. Petitioner in reply points out that the original claims of the ’831 Application were rejected by the Examiner, and the claims were not allowed until they were amended “to require the grounding member to be ‘exposed outside of the connector body,’ supporting that other features attribute to the non-obviousness of [Petitioner’s] claimed invention.” Pet. Reply 19–20; see Ex. 2014, 3:35–4:15 (issued claim 1 from the ’831 Application). Petitioner distinguishes the Andersen decision cited by Patent Owner as involving “long-felt need, the failure of others, unexpected results, copying, and praise by others,” none of which are present here. Pet. Reply 20. Patent Owner replies that the Examiner’s rejection in the ’831 Application “fails to change the fact that Petitioner’s own inventors thought that the original claims were nonobvious.” PO Sur-reply 3. Patent Owner additionally notes that the “rejection was based on a parent patent to the ’983 [p]atent,” which Patent Owner argues “confirm[s] that Petitioner’s inventors were trying to patent the same claimed invention believing it to be patentable.” Id. (citing Ex. 2015, 4–5).” slip op. at 94
Patent outcomesUS 10,446,983 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,446,983 - Cisco Systems, Inc. v. Ramot At Tel Aviv University, Ltd.No claims unpatentablePTAB · Oct 3, 2023 · IPR2022-00576 · APJ Monica S Ullagaddi · IPR · Final written decision
Claims 13, 14, and 23–29 were not shown unpatentable as obvious over Roberts and Taraschuk, with or without Wright, because the asserted combinations did not teach or suggest the claimed delta features.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not discern a substantial difference between the parties’ definitions for the level of ordinary skill in the art. Instead, we determine that the parties’ definitions are substantially similar. We adopt Petitioner’s definition of the level of skill in the art, which is consistent with the disclosure of the ’872 patent and asserted prior art of record. The findings and conclusions rendered in this Decision would not change had we adopted Patent Owner’s definition.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We need not construe any claim term in our Decision in order to resolve the issues before us. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“for a LUT having the recited deltas except for Dr. Blumenthal’s analysis. Although Wright generally teaches compensating for mismatches, Dr. Blumenthal’s analysis fills in limitations 13.8 and 13.9––Petitioner does not set forth a sufficiently supported reason for using the specific values recited in limitations 13.8 and 13.9. At best, Petitioner presents an “obvious to try rationale”: In addition to the reasons mentioned above, a POSITA would have found it obvious to try a mapping scheme in which entries in the look-up table as taught by Taraschuk are selected such that successively decreasing inputs correspond to digital output entries with either decreasing, increasing, or similar deltas between their values. . . . Doing so would have involved choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. In that regard, the deltas between values of the corresponding digital outputs can either increase, decrease, or stay the same. Accordingly, there are only three possible relationships between deltas of successive digital outputs. With so few possibilities, a POSITA would have found it obvious to try each of them. Pet. 59 (citing Ex. 1003 ¶ 265). The analysis for 13.8 is incorporated by reference in 13.9. See Pet. 60. Although there are three possible relationships between two, consecutive deltas, there are many possible sequences of deltas––Petitioner does not sufficiently show a finite number of solutions in its challenge.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner’s argument that the portions of Taraschuk in column 7, lines 61–67 and column 8, lines 13–15 cited by Petitioner in its challenge to claim 13 teach “an end-to-end approach” “because that calculation involves predistortion of the input M-bit word by subtracting a digitized analog sample of the ultimate output,” and as such, teach “[a]n approach that necessarily does one combined correction for all of the nonlinearities that occur in-between those ends—whether bit mismatches in the digital logic or non-linearities in the Mach-Zehnder modulator.” PO Sur-reply 18 (citing PO Resp. 30–36; Ex. 2018 ¶¶ 48, 49, 85–87, 89, 103; Ex. 1006, 7:34–39, 7:61–67). We further agree with Patent Owner’s assertion that [Patent Owner] and Prof. Dallesasse are not suggesting that Dr. Blumenthal should model the logic-level mismatches. But rather pointing out that calculating an idealized sinusoidal response in isolation is not obvious (or flowing naturally) from a reference that can only deal with compensating the combined response of the modulator and digital logic mismatches together—via real-time pre-distortion fed back from the ultimate output and subtracted from the input. Dallesasse testifies that Dr. Blumenthal starts with the premise that all that is required is deriving a complementary function to the sinusoidal response. . . . But this ignores that the disclosure of Taraschuk describes compensating “the sinusoidal response of the modulator” and “logic level mismatches through the D/A converter” together. . . . Dr. Blumenthal’s complementary sinusoidal correction curve won’t do that. The combined non-linearity from the multiple sources likely won’t simply be evenly sinusoidal. Taraschuk does not disclose, or in my opinion render obvious, any pre-calculation solution. (Taraschuk mentions a real-time analog feedback loop to pre-distort, which would not involve pre-calculation.) And it certainly does not suggest one that could deal with the combined and likely complex non-linearities described.” slip op. at 28
Patent outcomesUS 11,133,872 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,133,872 - Google LLC v. Singular Computing LLCInstitution deniedPTAB · Jul 25, 2023 · IPR2023-00396 · APJ Jameson Lee · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the arguments and evidence before us, we conclude Petitioner has not shown a reasonable likelihood that it would prevail in establishing unpatentability of any challenged claim of the ’775 patent. The Petition is denied, and no inter partes review is instituted.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of the alleged invention “would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture” and that “[m]ore education could substitute for experience, and vice versa.” Pet. 4 (citing Ex. 1003 ¶¶ 35–36).” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“specification of the ’775 patent. But that does not mean “input-output unit” automatically can be construed as encompassing anything that has some tangential involvement in getting data into and out of a component which accepts and provides data. The construction still has to be reasonable and consistent with the specification, even under a broadest reasonable interpretation rule of claim construction that is more lenient than the Phillips standard which applies here. See In re Smith International, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017). A particular reading is not deemed consistent with the specification simply because the specification does not expressly preclude that reading. Id. at 1382 (“Therefore, the Board’s reasoning that because the specification does not ‘in and of itself proscribe the Examiner’s construction,’ the examiner’s interpretation was reasonable, Board Decision, 2016 Pat. App. LEXIS 3764, at *4, was erroneous.”). Although an input-output unit must be connected to a system component to function as an input-output unit with respect to that component, it would be unreasonable to regard that connection, such as a data bus, as itself an input-output unit. A data bus carries data from place to place but does not have a significant role on when to place data onto the bus or when to off load data from the bus, or what data to place on the bus.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We need not resolve whether, as Petitioner contends, one with ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, to perform, primarily, image processing applications. Even assuming that one of ordinary skill in the art would have made the proposed modification to Schmidt-2000’s KPROC chip, and successfully in doing so, Petitioner still has not made a sufficient accounting for limitations [1E] and [1J] as we explain below. We proceed to analyze claim 1, assuming as Petitioner contends, that one of ordinary skill in the art would have modified Schmidt-2000’s 16-bit architecture to an 8-bit architecture, i.e., registers having 8 bits instead of 16 bits and all execution units, e.g., adders, multipliers, processing 8 bits at a time rather than 16 bits.” slip op. at 26
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00397 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–5, 7–14, and 16–23 based on a reasonable likelihood that claims 1–5 are obvious over Stuttard and Shirazi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’775 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’775 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’775 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, and 16–23 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00396, Petitioner challenges claims 1–5, 7– 14, and 16–23 as obvious over other references not relied on in the Petition before us. IPR2023-00396, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00396 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00396, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 6. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,169,775 - Google LLC v. Singular Computing LLCInstitutedPTAB · Jul 25, 2023 · IPR2023-00395 · APJ Ken B Barrett · IPR · Institution
Instituted review of claims 1–5, 7–14, 16–22, and 24 on obviousness over Stuttard and Shirazi; the Board found a reasonable likelihood of success on claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’616 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’616 patent on the sole ground of unpatentability set forth in the Petition.” slip op. at 2
- Parallel petitionsNot reached
“patentability of claims of the ’616 patent. In the Petition before us, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over Stuttard and Shirazi. Pet. 1. In IPR2023-00394, Petitioner challenges claims 1–5, 7–14, 16–22, and 24 as obvious over references not relied on in the Petition before us. IPR2023-00394, Paper 2, 1. On December 22, 2022, in accordance with the Board’s Consolidated Trial Practice Guide (“Consolidated TPG”),9 Petitioner filed a Notice Ranking Petitions and 7 Although there is only one ground in the Petition, Petitioner analyzes the challenged claims as three groups under the headings “Ground 1A,” “Ground 1B,” and “Ground 1C.” See, e.g., Pet. i–v (Table of Contents). 8 For purposes of this Decision, we assume the challenged claims have an effective filing date prior to March 16, 2013, the effective date of the relevant aspects of the Leahy-Smith America Invents Act, Pub. L. No. 112- 29, 125 Stat. 284 (2011) (“AIA”), and we apply the pre-AIA version of 35 U.S.C. § 103. See Pet. 1, 4 (applying pre-AIA provisions). 9 Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated, 59–61 (explaining that the Board may exercise discretion under 35 U.S.C. Explaining Material Differences. Paper 3 (“Notice”). In its Notice, Petitioner requests that we consider the Petition in IPR2023-00394 first and the Petition in this proceeding second. Id. at 1. Patent Owner did not respond to the Notice in either its Preliminary Response or in a separate paper, as the Consolidated TPG allows. See Consolidated TPG, 60. We need not decide the issue of discretion under 35 U.S.C. § 314(a). For the reasons detailed in the Decision on Institution in IPR2023-00394, institution is denied in that case because the information presented in the petition does not show a reasonable likelihood of prevailing.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that: A [person of ordinary skill in the art] would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, Applied Mathematics, or the equivalent, and two years of academic or industry experience in computer architecture. More education could substitute for experience, and vice versa. Pet. 4 (citing Ex. 1003 ¶¶ 33–37). Patent Owner states that, “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of ordinary skill in the art.” Prelim. Resp. 9. Petitioner’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s definition of the person of ordinary skill in the art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that, in the Petition, all claim terms have been given their ordinary and customary meaning, and does not propose any constructions under the “Claim Interpretation” heading. Pet. 5. Patent Owner states that it “agrees that no claim construction is necessary,” and impliedly asserts that it applies the “plain meaning” of all claim terms. Prelim. Resp. 9. We determine that no express claim construction is necessary for purposes of this Decision, except for “input-output unit” and the recitations regarding the interior processing element connections. 1. Input-Output Unit Independent claims 1, 7, and 16 each recite an “input-output unit.”” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,754,616
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.