- PTAB · Feb 7, 2024 · IPR2023-01202 · APJ John A Hudalla · IPR · Institution
The Board instituted IPR on claims 1–7, 9–11, and 13 on all asserted grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to claims 1–7, 9–11, and 13 of the ’311 patent on all grounds of unpatentability presented.” slip op. at 2
- Adverse judgmentAdverse judgmentOther
“Patent Owner’s Disclaimer of Claim 12 As indicated above, Patent Owner filed a statutory disclaimer of claim 12 of the ’311 patent. See Ex. 2007. In view of Patent Owner’s statutory disclaimer, we treat claim 12 as having never been part of the ’311 patent. See Vectra Fitness, Inc. v. TNWK Corp., 162 F.3d 1379, 1383 (Fed. Cir. 1998) (“This court has interpreted the term ‘considered as part of the original patent’ in [35 U.S.C. §] 253 to mean that the patent is treated as though the disclaimed claims never existed.”) (citing Guinn v. Kopf, 96 F.3d 1419, 1422 (Fed. Cir. 1996)). And, because no inter partes review will be instituted based on disclaimed claims, we do not consider claim 12 to be within the scope of this proceeding. See 37 C.F.R. § 42.107(e) (“No inter partes review will be instituted based on disclaimed claims”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review in view of a statutory disclaimer of all challenged claims). Thus, we confine our unpatentability analysis to claims 1–7, 9–11, and 13, the challenged claims of the ’311 patent that have not been disclaimed.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Citing testimony from Dr. Meinhart, Petitioner contends a person of ordinary skill in the art “would have had at least a Bachelor of Science degree in mechanical engineering, electrical engineering, or a similar degree with one or two years of graduate school training or one to two years of industry experience in the fields of mechanical design, fluid mechanics, heat transfer, or electronics cooling.” Pet. 7 (citing Ex. 1003 ¶ 15). Petitioner further notes that “[l]ack of work experience could have been remedied by 3 The present record does not include any evidence of secondary considerations of nonobviousness. additional education, and vice versa,” and that “[s]uch academic and industry experience would be necessary to appreciate what was obvious and/or anticipated in the industry and what a [person of ordinary skill in the art] would have thought and understood at the time.” Id. (citing Ex. 1003 ¶ 16). Patent Owner does not dispute Petitioner’s proposed level of ordinary skill in the art at this time. Prelim. Resp. 5. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art without the qualifier “at least,” which introduces ambiguity. On the present record, we are satisfied that this definition of the level of skill is consistent with the teachings of the ’311 patent and the asserted prior art.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[n]othing in the specification or prosecution history of the ’311 Patent expressly defines any term appearing in any claim of the ’311 Patent,” and that “the Board does not need to construe any claim term for purposes of evaluating the prior art in this Petition.” Pet. 7. Petitioner concludes that “for purposes of this proceeding only, Petitioner believes that no claim term requires construction.” Id. Likewise, Patent Owner contends that “claim construction is not necessary for the Board to determine that the Petition fails to demonstrate a reasonable likelihood that any challenged claim of the ’311 patent is unpatentable.” Prelim. Resp. 5. For purposes of this Decision, we determine that no aspects of the challenged claims require explicit construction. 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 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,223,311 - Samsung Electronics Co., Ltd. v. Almondnet, Inc.No claims unpatentablePTAB · Feb 2, 2024 · IPR2022-01259 · APJ Charles J Boudreau · IPR · Final written decision
The Board held claims 35–51 not unpatentable because the asserted combinations did not show that the claimed computers automatically authorize a distinct third-party second media property to allow ad display.
RulingsFinal written decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Having considered the parties’ arguments, we agree with Petitioner that the recited “system” of claim 35 does not necessarily exclude a “third-party second media property.” As Petitioner points out, claim 35 uses the open-ended transitional phrase “comprising,” such that the recited “system comprising one or more computers” may include components other than the recited “one or more computers.” See Pet. Reply 1 (citing CIAS, Inc. v. All. Gaming Corp., 504 F.3d 1356, 1360 (Fed. Cir. 2007)). Moreover, we agree with Petitioner that the phrase “programmed to implement a method of directing electronic advertisements” more naturally modifies “one or more computers,” rather than “system.” Id. at 3. Nonetheless, it is clear from the plain language of claim 35, as well as from the prosecution history of the related ’745 patent, that the third-party second media property must be distinct from such “one or more computers.” Petitioner’s repeated use of the abbreviation “TPSMP” obscures the fact that claim 35 does not simply recite a “second media property” but instead specifically recites a “third-party second media property.” Ex. 1001, 16:18–19 (emphasis added). Highlighting the significance of the modifier “third-party,” as Patent Owner points out, is the fact that that modifier was added to “second media property” in the phrase “automatically electronically authorizing, with at least one of the computers, a third party second media property to allow display, to the electronic visitor when later visiting the second media property, of an advertisement” in an Examiner’s amendment during prosecution of the ’822 patent’s grandparent ’286 application to avoid certain prior art, and the prosecution record of the ’286 application reflects that this amendment was made to make it clear that the recited “authorizing is being done of an unrelated site.” Ex. 2005, 58; see PO Resp. 10–11. More particularly, as Patent Owner points out, the applicant stated in the cited examiner interview report that “the claim structure already made [it] clear” that “the authorizing is being done of an unrelated site . . . because the phrase ‘authorizing’ a site does not seem to cover a site deciding something on its own,” but that the amendment to specify a “third party second media property” made that requirement “explicit.” Ex. 2005, 58; see PO Resp. 7–8 (quoting the same).” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“We adopt Petitioner’s articulation of the level of ordinary skill in the art, minus the phrases “at least” modifying the education and “or more” modifying the number of years of experience. As we explained in our Institution Decision, although Petitioner’s articulation otherwise appears consistent with the level of skill in the art at the time of the invention as reflected in the asserted prior art, inclusion of such qualifiers render the articulation vague by being open-ended thus encompassing the level of education and experience of an expert, someone with more than ordinary skill in the art. See Dec. 12. Thus, in summary, we find that one with ordinary skill in the art at the pertinent time period would have had a bachelor’s degree in computer science, electrical engineering, computer engineering, or the equivalent, and two years of experience with designing, programming, configuration, and/or analysis/research with Internet or similar network-related processes including, for example, user/entity profile management and/or web-based targeted content delivery, or a related field, where more education could supplement practical experience and vice versa.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot shown unpatentable
“Having considered the parties’ respective contentions in light of the evidence of record, we conclude that Petitioner has not established by a preponderance of the evidence that claim 35 is unpatentable over the combination of Perry, Wilson, and Bronson. In particular, we are not persuaded that the cited prior art teaches or suggests “a system comprising one or more computers programmed to implement a method . . . comprising: . . . automatically electronically authorizing a third-party second media property to allow display . . . of an advertisement correlated with the profile-attribute information received about the visitor.” Although Figure 1 of Perry depicts a “system” that includes computers programmed to implement a method of distributing advertisements to users over the Internet, we are not persuaded that any component in that system implements a method that includes “automatically electronically authorizing a third-party second media property” to display such advertisements. As Patent Owner points out, Petitioner identifies “Internet publisher computer systems 131 and 132” and “advertising service company computer system 140 comprising one or more CPUs 141” as the recited “one or more computers.” Pet. 7; PO Resp. 11. Although there is no dispute that Publisher Systems 131 and 132 and ASC 140 are computers, we find that neither satisfies the remaining limitations of claim 35, particularly because neither “automatically electronically authoriz[es] a third-party second media property” to display advertisements. As we explain in our claim construction discussion above, we are not persuaded by Patent Owner’s arguments that the recited “system” necessarily must exclude the “third-party second media server.” See supra § III.C. Nonetheless, the third-party second media server still must be separate and distinct from the “one or more computers programmed to implement [the recited] method,” lest the modifier “third-party” be rendered meaningless.” slip op. at 54
- Expert testimonyPatent owner expert discountedDecided for patent owner
“Further, Patent Owner did not present Mr. Sherwood as an expert on patent law or claim drafting, and we decline to give substantial weight to his testimony on this issue that is ultimately a matter of law. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996) (ruling that the interpretation of patent claims is a matter of law to be determined exclusively by the courts). Still further, Petitioner’s counsel conceded that the formatting of the claim is not dispositive. Tr. 14:14–18.” slip op. at 26
Patent outcomesUS 8,200,822 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · Markman · KSR · GrahamPatents in suitUS 8,200,822 - PTAB · Jan 19, 2024 · IPR2023-00973 · APJ Elizabeth M Roesel · IPR · Institution
The Board instituted IPR of claim 1 based on compelling and reasonably likely obviousness challenges over Redlich alone and Redlich with Ozzie.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We disagree with Patent Owner’s argument that Redlich is the same or substantially the same as the ’825 and ’047 patents. Prelim. Resp. 6–11. In contrast to Redlich, the ’825 and’047 patents are not prior art to the ’244 patent. Patent Owner does not dispute Petitioner’s showing that the ’825 and ’047 patents were issued after the ’244 patent’s filing date and are not prior art to the ’244 patent under pre-AIA §§ 102(a), (b), or (e). Pet. Reply 1–2 & n.1 (timelines); see PO Sur-reply 1 (reproducing Petitioner’s timelines). Moreover, Patent Owner points to nothing in the ’244 patent’s file history that would indicate the Examiner considered or applied the ’825 and ’047 patents or the corresponding pre-issuance publications as prior art under §§ 102 or 103. As stated above, Redlich is not listed in the ’244 patent under “References Cited,” and the same is true for the ’825 and ’047 patents and the pre-issuance publication of the ’047 patent. Ex. 1001, code (56). Although the ’825 and ’047 patents were the basis for non-statutory obviousness-type double patenting rejections that were overcome with a terminal disclaimer (Ex. 1002, Part 5, 2375–77, 2384, 2390), the Examiner made no prior art rejection under §§ 102 or 103 based on these patents or the corresponding pre-issuance publications. We also disagree with Patent Owner’s argument that the Petition presents the same arguments as considered by the Office during examination. Prelim. Resp. 2, 6, 12–15. Petitioner’s obviousness challenge based on Redlich and Ozzie is substantially different from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. Patent Owner argues that teaching cloud-based computing and rely on the same rationale for combining the prior art teachings. Id. at 12–14. But Patent Owner makes no argument that Fahlman (cited by the Examiner) is the same or substantially the same as Redlich (relied on by Petitioner). At this stage, Patent Owner does not dispute Petitioner’s contention that Redlich discloses features that were added to the claims to obtain allowance over Fahlman. Pet. 5–8. Petitioner’s undisputed contention distinguishes the obviousness challenge based on Redlich and Ozzie from the Examiner’s § 103 rejection based on Fahlman and Hoffberg. In sum, we determine that the Petition is not based on the same or” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitutedDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling. V. COMPELLING MERITS ANALYSIS A. Legal Standard As discussed infra, “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Guidance Memo at 4. The Guidance Memo does not change the statutory standard for institution under 35 U.S.C. § 314(a). Instead, a determination of compelling merits will outweigh the other Fintiv factors,” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“VI. REASONABLE LIKELIHOOD UNDER 35 U.S.C. § 314(a) For the reasons discussed in Section V above, we determine that the information presented in the Petition and the Preliminary Response shows a reasonable likelihood that Petitioner would prevail on its challenge to claim 1 of the ’244 patent. Accordingly, we institute an inter partes review. VII. ORDER It is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claim 1 of the ’244 patent is instituted commencing on the entry date of this Decision; and” slip op. at 25
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Term construed petitioner construction§112(f) appliesOther
“The patent statute provides that “[a]n element in a claim for a combination may be expressed as a means or step for performing a specified function without the 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, para. 6 (pre-AIA). This statutory provision presumptively does not apply to a claim term that lacks the word “means,” but the presumption can be overcome if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Under our rules, a petition must provide a construction for a means- specification that describe the structure, material, or acts corresponding to each claimed function.” 37 C.F.R. § 42.104. Petitioner proposes constructions for the claim terms it identifies as means-plus-function limitations. Pet. 11–15. Patent Owner does not address claim construction at this stage of the proceeding. For purposes of this Decision, we apply Petitioner’s proposed constructions, as follows. Claim term Function Corresponding structure” slip op. at 18
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,468,244 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Jan 12, 2024 · IPR2023-00970 · APJ Thu A Dang · IPR · Institution
The Board denied institution for claims 1, 5, 25, 26, 30, and 50 because the Fintiv factors favored discretionary denial and the Petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factors 1 and 3 are neutral, factors 2 and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs marginally against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“§ 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“provided compelling evidence to support its contention that Bossemeyer, alone or in combination with Merenda, teaches “permitting full or partial reconstruction of said data with corresponding extracted data and remainder data after accessing said respective extract stores” recited in claims 1 and 29.5 5 In view of this determination, we do not need to address Patent Owner’s additional argument that Bossemeyer is not analogous art to the ’482 patent. Prelim. Resp. 16–24. Similarly, we do not need to address Patent Owner’s additional argument that a person of ordinary skill would not have found it obvious to combine Merenda with Bossemeyer. Prelim. Resp. 50–61.” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 15
§ 103 obviousnessDiscretionary denialPatents in suitUS 7,552,482 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01093 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 2, 4, and 18 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“and only to the extent necessary to resolve the issues in dispute. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Neither party proposes claim constructions for our consideration. Petitioner reports that it “believes that no special constructions are necessary to assess whether the challenged claims are unpatentable over the asserted prior art.” Pet. 5 (citing Baker Decl. ¶ 68). Patent Owner does not dispute Petitioner’s position or discuss claim construction. Therefore, we determine there are no claim terms that need to be construed at this stage.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline,” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,201,500 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01092 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution for claims 23–31 under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“system are best served by denying or instituting review” when evaluating these factors. Fintiv, Paper 11 at 6. We have considered the circumstances and facts before us in view of Fintiv factors 1–5. As discussed above, factor 1 is neutral, factors 2, 3, and 5 weigh in favor of discretionary denial of institution, and factor 4 weighs slightly against discretionary denial. We, therefore, conclude that the evidence of record on factors 1–5 favors exercising our discretion to deny institution of an inter partes review. Accordingly, following CommScope, where, as here, our analysis of the first five Fintiv factors favors denial of institution, we address the merits of the Petition to determine whether the merits are compelling.” slip op. at 18
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“the Fintiv factors. As discussed above, we have determined that factors 1–5 weigh in favor of discretionary denial of institution. Moreover, we have further determined that the Petition does not show compelling evidence of unpatentability under factor 6. We therefore conclude that the evidence of record favors exercising our discretion to deny institution of an inter partes review. V. CONCLUSION Upon consideration of the Petition, Preliminary Response, Preliminary Reply, Preliminary Sur-reply, and the accompanying evidence, we exercise our discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review challenging claims 23–31 of the ’500 patent. VI. ORDER For the foregoing reasons, it is hereby: ORDERED that the Petition is denied, and no trial is instituted.” slip op. at 41
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableNot reached
“device.” Instead, the output current in Okada is determined in steps 6–12 of the flowchart, where the receiver transmits and the transmitter receives power consumption information derived from a code stored on the device being charged. Prelim. Resp. 28–29; Ex. 1005 ¶¶ 69–73. The transmitter adjusts the power to one of three levels, a one-time selection that remains for the duration of the charging. Prelim. Resp. 28–29. We, therefore, do not find compelling evidence that Okada meets this claim element. Nor are we convinced by Petitioner’s “modifications” to Okada. Pet. 58 (referring to annotated Fig. 3). In Petitioner’s modified Okada system, the receiver circuit would “periodically communicate information corresponding to an output voltage or current of the receiver rectifier circuit to cradle 4.” Id. (emphasis omitted). Petitioner points to the testimony of its expert, Dr. Baker. Id. (citing Baker Decl. ¶ 210). We do not find that there is compelling evidence that Okada’s “carrier wave” would have enabled cradle 4 to ‘regulate in a closed loop manner the output voltage or current of the receiver rectifier circuit during the charging or powering of the portable device.’” Id. (emphasis omitted). We find Dr. Baker’s testimony confusing and, ultimately, not compelling. Instead of setting forth his support for his opinion, he incorporates by reference over 100 pages of his prior testimony. See Baker Decl. ¶ 210 (incorporating prior analysis for limitations 23(a)- 23(h) in Sections IX.A.1(a)–1(h) and analysis and discussions in Sections VIII.A–E). Patent Owner cites several instances of this lack of particularity in the Petition, and we agree. See Prelim. Resp. 22–25. Dr. Baker’s testimony similarly lacks focus and deprives us of a fair opportunity to assess the basis for his testimony. Our Consolidated Trial Practice Guide (Nov. 2019)9 provides the following guidance on presenting cases and warns against lack of focus: Although parties are given wide latitude in how they present their cases, the Board’s experience is that the presentation of an overwhelming number of issues tends to detract from the argument being presented, and can otherwise cause meritorious issues to be missed or discounted. Thus, parties should avoid submitting a repository of all the information that a judge could possibly consider, and instead focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record. Id. at 39 (emphasis added). Petitioner has failed to follow this guidance throughout its presentation. As a consequence, we find it difficult to discern compelling evidence in Petitioner’s argument for why Okada should be modified to provide closed-loop operation.” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“required by the claim would require the transmitter to regulate. But the Okada drive circuit . . . as described is not designed for this type of regulation.” Prelim. Resp. 30. As Patent Owner explains, “Okada teaches simply choosing one of three power levels through the use of a multi-tapped primary side coil.” Id. Modifying Okada would require “additional circuitry and control mechanisms required for closed loop regulation.” Id. Petitioner fails to provide compelling evidence that a person of ordinary skill would have modified Okada’s open-loop circuitry and controls employing a multitap helical coil, described supra, for closed-loop operation such as that disclosed in Berghegger, which operates on entirely different principles. We are not convinced that Petitioner provides a sufficiently compelling motivation to import closed-loop operation into Okada’s open-loop system. The Supreme Court has warned against “slipping into use of hindsight.” KSR, 550 U.S. at 421(quoting Graham, 383 U.S. at 36). In this regard, the Federal Circuit has said that “combinations that change the basic principles under which the [prior art] was designed to operate, . . . may fail to support a conclusion of obviousness.” Plas-Pak Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 758 (Fed. Cir. 2015) (quoting In re Ratti, 46 CCPA 976, 270 F.2d 810, 813 (1959), In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984)) (internal quotation marks and cites omitted) (alterations in original). For the reasons given, we are not persuaded that Petitioner presents a compelling reason to modify Okada for closed-loop operation in the manner suggested by Dr. Baker.” slip op. at 33
§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,201,500 - Samsung Electronics Co., Ltd. v. Mojo Mobility Inc.Institution deniedPTAB · Jan 8, 2024 · IPR2023-01091 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 3, 9, 11–13, and 20, finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“We agree with Patent Owner’s analysis based on the schedule set by Judge Gilstrap. The fact that the time-to-trial statistics cited by Petitioner predict an even earlier trial date than that set by Judge Gilstrap merely confirms that the schedule set by the district court is credible and should be given weight. We are not persuaded by Petitioner’s argument that diligence in filing the Petition “in advance of the one-year bar date and within four months of PO’s infringement contentions in the Texas Litigation” should weigh in favor of institution. Pet. 86–87; Prelim. Resp. 18 (timeline).5 We find that this factor favors exercising our discretion to deny institution.” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner that the Petition does not present compelling evidence that Okada, alone or in combination with the other references cited by Petitioner, teaches or suggests claim limitation [1.k]. The operation described by Okada and relied on by Petitioner does not “periodically receive information corresponding to one or more output voltages or currents of the one or more receiver rectifier circuits via the one 9 Petitioner also provides an annotated version of this figure in connection with its analysis of this limitation. See Pet. 61. or more primary coils and the one or more sense circuits,” nor does it “regulate in a closed loop manner the output voltage or current of the receiver rectifier circuit during the charging or powering of the portable device” as recited in limitation [1.l]. Instead, the output current in Okada is determined in steps 6–12 of the flowchart in Figure 3, where the receiver transmits and the transmitter receives power consumption information derived from a code stored on the device being charged. Prelim. Resp. 37– 38; Ex. 1005 ¶¶ 69–73. The transmitter adjusts the power to one of three levels, a one-time selection that remains for the duration of the charging. Prelim. Resp. 38. We agree with Patent Owner that in Okada, “there is no periodic receipt of power information of any type, let alone information corresponding to the output voltage or current of the receiver rectifier circuit.” Id. (emphasis omitted).” slip op. at 30
- Skill levelSkill level petitioner adoptedDecided for petitioner
“patent would have possessed “at least a master’s degree in electrical engineering, or a similar discipline” and would have had “two or more years of experience with wireless charging systems, including, for example, inductive power transfer systems,” with additional education supplementing “practical experience and vice versa.” Pet. 4 (citing Baker Decl. ¶¶ 20–21). Patent Owner does not dispute Petitioner’s description of a person of ordinary skill in the art or provide its own description. We regard Petitioner’s description as consistent with the challenged patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Thus, for the purpose of our decision, we adopt Petitioner’s proposal.” slip op. at 20
- Parallel petitionsNot reached
“1 Consistent with the Board’s practice for handling parallel petitions Petitioner filed a Notice Regarding Multiple Petitions (Paper 3, “Notice”). See Consolidated Trial Practice Guide (November 2019) (available at https://www.uspto.gov/TrialPracticeGuideConsolidated.) In the Notice, Petitioner states that “[t]here was no practicable way to fit the challenges in a single petition” due to the length of the claims and the “substantially different features” in the dependent claims. Notice 3. Although we have discretion to deny a parallel petition under 35 U.S.C. § 314(a), in view of our assessment of the merits, we do not reach that issue here. 2 Those fifteen additional petitions are the following: (1) IPR2023-01086, (2) IPR2023-01087, (3) IPR2023-01088, (4) IPR2023-01089, (5) IPR2023- 01090, (6) IPR2023-01094, (7) IPR2023-01095, (8) IPR2023-01096, (9) IPR2023-01097, (10) IPR2023-01098, (11) IPR2023-01099, (12) IPR2023- 01100, (13) IPR2023-01101, (14) IPR2023-01102, and (15) IPR2023- 01124.” slip op. at 3
Discretionary denialcites KSR · GrahamPatents in suitUS 11,201,500 - Uv Engineering Solutions LLC v. Trojan Technologies Group UlcInstitution deniedPTAB · Dec 11, 2023 · IPR2023-01015 · APJ Scott B Howard · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–5 and 8–24 were unpatentable over the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “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(a) (2018). “When instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The primary dispute between the parties is whether the person having ordinary skill in the art works with lamps generally (Petitioner) or works with ultraviolet lamps for fluid treatment systems (Patent Owner). Although the specification of the ’654 patent focuses on ultraviolet lamps for fluid treatment systems (see Ex. 1001, 1:24–2:29), the claims of the patent are not so limited. Rather, the claims broadly claim “lamps” without reciting any field of use. See id. at 6:2–8:24. Because the claims are not limited to ultraviolet lamps or fluid treatment centers, Petitioner’s formulation of the level of skill is more consistent with the claims. Accordingly, we adopt Petitioner’s proposed description of the person having ordinary skill in the art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Because construction of the disputed claim limitation is not necessary to resolve the controversy, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe 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
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“Petitioner argues that a person having ordinary skill in the art would have “modif[ied] the terminal pins 126, 128, 130, and 132 of Ellner to be angled relative to the longitudinal axis as shown in Titchener so as to create a reliable connection between cables as disclosed in Titchener.” Pet. 12. Petitioner further argues that “[s]uch a modification would be a simple substitution of one known element (i.e., angled connectors 5a and 5b of Titchener) for another (i.e., non-angled terminal pins 126, 128, 130, and 132 of Ellner) to obtain predictable results.” Id. at 12–13. According to Petitioner, the combination of the teachings of Ellner and Titchener result in a lamp in which “each of the first elongate electrical connector (i.e., terminal pin 126, 128 modified to be angled as shown in Titchener) and the second elongate connector (i.e., terminal pin 130, 132 modified to be angled as shown in Titchener) configured to form an oblique angle with respect to the longitudinal axis.” Id. at 13.” slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,167,654 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00969 · APJ Thomas L Giannetti · IPR · Institution
The Board denied institution on claims 1, 6, 9, 10, 11, 15, 16, 21–23, and 27, finding Fintiv factors favored denial and the petition lacked compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivInstitution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id. at 6.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). 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 “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute inter partes review.” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We do not see compelling evidence from Petitioner that the extracting/parsing data limitation is taught or suggested by Bossemeyer. As discussed supra, in Section II.C, the ’987 patent discloses extraction occurring as an initial step in which a filter removes or extracts security-sensitive data from a data object prior to storage. See Ex. 1001, 19:45–49, Fig. 1A. In contrast, Bossemeyer discloses a “partitioned” memory (see Fig. 3, reproduced supra in Section II.E.1), but does not disclose extracting, i.e., filtering or separating, security sensitive information from source data to obtain extracted data and remainder data. See Easttom Decl. ¶ 29 (“Bossemeyer is entirely silent as to where the information stored in the central server comes from, the form it takes before it gets to the central database server, or how the different pieces of information end up in the different partitioned areas of memory.”). Petitioner points to no disclosure or suggestion that the “proprietary” and “limited access” information in Bossemeyer’s database has been filtered or separated from the “public” information, so as to result in “extracted data” and “remainder data,” as recited in the challenged claims.” slip op. at 22
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“repeatedly refers to Bossemeyer’s “partitioned” database server and attempts to equate “partitioning” with “extraction.” See, e.g., Pet. 24 (“Bossemeyer partitions or separates (e.g., extracts), user data into subsets of extracted data, e.g., limited access information and/or proprietary information, and remainder data, e.g., public information.”) (emphases and color highlighting omitted). We do not find this argument compelling. We agree with Patent Owner’s expert, Dr. Easttom, who testifies, “a partitioned memory does not Dr. Easttom explains, a partitioned memory “merely refers to memory with different areas reserved for different types of information.” Id. Petitioner argues that, to the extent Bossemeyer does not explicitly disclose “extracting data,” a person of ordinary skill would have understood that, when Bossemeyer’s central data base server “partitions” user information in terms of accessibility, Bossemeyer teaches “separating sensitive information from user data.” Pet. 27 (citing Ex. 1005, 2:17–20). We find the reference in Bossemeyer to “partitions” is not a compelling disclosure of extracting, e.g., filtering or removing, security sensitive data from a data object prior to storage. We agree, instead, with Dr. Easttom, that this disclosure in Bossemeyer is “merely referring to the act by the memory partitions of keeping different pieces of information separate from each other, not removing some pieces of data from a larger whole.” Easttom Decl. ¶ 32. He concludes that “[a person of ordinary skill] would have understood that the extracting/parsing process of the ’987 Patent is vastly different than the act of ‘partitioning’ either as used in Bossemeyer or as used in the art at the time.’” Id. ¶ 34.” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,349,987 - International Business Machines Corporation v. Digital Doors, Inc.Institution deniedPTAB · Dec 5, 2023 · IPR2023-00971 · APJ Thu A Dang · IPR · Institution
The Board denied institution on all challenged claims under § 314(a), finding the Fintiv factors favored denial and the petition did not present compelling merits.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied
“1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). “These factors relate to whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied fintivInstitution denied
“We have jurisdiction under 35 U.S.C. § 314 (2018) and 37 C.F.R. § 42.4(a) (2023). Applying the standard set forth in 35 U.S.C. § 314(a), we may not institute an inter partes review (also “IPR”) 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.” However, institution of inter partes review is discretionary. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he PTO is permitted, but never compelled, to institute an IPR proceeding.”). For the reasons stated below, we exercise our discretion not to institute an inter partes review.” slip op. at 2
- Expert testimonyPatent owner expert creditedPetitioner expert discountedDecided for patent owner
“Furthermore, we are not persuaded that Dr. Zadok’s testimony provides compelling evidence that this limitation is met by Bossemeyer. See Ex. 1003 ¶¶ 194–211. We agree with Patent Owner that much of Dr. Zadok’s testimony is based on assumptions that he does not support with facts. Prelim. Resp. 34–41. For example, he testifies, without factual support, that “[t]he system of Bossemeyer retrieves remainder data (e.g., public information such as a customer’s name), retrieve [sic] extracted data (e.g., proprietary or limited access information such as credit card numbers and account PIN/numbers), and then logically merges these pieces of information (i.e., reconstruct the original information to appear as before it was split into different security categories).” Ex. 1003 ¶ 207 (emphases and color coding omitted). Dr. Zadok provides no citation to Bossemeyer, and we see no disclosure that Bossemeyer’s system “logically merges” public information, such as a customer’s name, with proprietary or limited access information, such as credit card numbers and account PIN/numbers. Id. Dr. Zadok even admits that “Bossemeyer does not explicitly state that the ¶ 208. Nevertheless, he speculates (without support) that “a [person of ordinary skill in the art] would have understood that such logical merging would have been obvious to take place for the (secure) transaction to succeed.” Id. Similarly, we are not persuaded by Dr. Zadok’s testimony, referring to an example from Bossemeyer involving access to medical data (Ex. 1005, 5:6–15), that “Bossemeyer discloses permitting reconstruction of some of a user’s medical data (e.g., data including the user’s medical alerts 212, and insurance and prescription information 214) and permitting reconstruction of all of user’s data (e.g., data further including the user’s medical history 216) with additional authorization.” Ex. 1003 ¶ 210 (emphases and color highlighting omitted). We find that Dr. Zadok’s testimony is speculative, hindsight-biased, and unsupported by Bossemeyer, which does not disclose or suggest any such logical merging of data. See, e.g., Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1354 (Fed. Cir. 2013) (holding that an articulated reasoning “is especially important to guard against the dangers of hindsight bias”). See Ex 2004 ¶¶ 47–56 (challenging Dr. Zadok’s assumption of merging data in Bossemeyer).” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill would have “a bachelor’s degree in computer science, computer engineering, electrical engineering, or equivalent, and approximately two years of experience “[l]ess professional experience can be substituted by additional education and vice versa. Pet. 6 (citing Ex. 1003 ¶¶ 112–113). Patent Owner does not contest Petitioner’s proposal or offer an alternative. On this record, we are persuaded that Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,721,344
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.