- PTAB · Mar 14, 2024 · IPR2023-01385 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 1–7, 10–12, 14–21, and 23 on all asserted grounds, finding a reasonable likelihood that Chou renders claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim of the ’812 patent. We therefore institute inter partes review as to all of the challenged claims of the ’812 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’812 Patent” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We regard Petitioner’s definition as consistent with the complexity of the technology described in the ’812 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Patent Owner’s use of the term “technical field” is unduly vague. Therefore, for the purpose of this Decision, we adopt Petitioner’s proposed formulation. C. Claim Construction” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“On this record, we preliminarily agree with Patent Owner that the ’812 patent shows alternative ways for a reflector sheet “to conform to a shape of a protruding feature” on a lighting tile that does not demand the reflector sheet have “the same shape, outline, or contour of a protruding feature” as Petitioner’s proposed construction in the Underlying Litigation would require. To illustrate this, Figures 3 and 4 from the ’812 patent are shown in their entirety below.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,690,812 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Mar 5, 2024 · IPR2023-01145 · APJ Michael T Cygan · IPR · Institution
The Board instituted inter partes review of claims 1–10 on both asserted § 103 grounds: Yu and Hansen with WWiSE.
RulingsInstitution decision- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“The touchstone in determining whether a reference constitutes a printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 9–10. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 8 (citing Ex. 1003 ¶ 71). Patent Owner does not contest this assessment. Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’146 patent and the prior art of record.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b).” 37 C.F.R. § 42.100(b). Under this standard, the words of a claim generally are given their “ordinary and customary meaning,” which is the meaning the term would have to a person of ordinary skill at the time of the invention, in the context of the entire patent including the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc). Here, neither party sets forth any claim construction. Pet. 9; Prelim. Resp. 3. Therefore, we construe the claims pursuant to § 42.100(b).” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Patent Owner argues, and we agree at this stage, that a general desire to combine two competing proposals as expressed in Hansen does not specifically motivate incorporating ER header bits into the standard, as asserted by Petitioner. Prelim. Resp. 43–45. Although insufficient by itself to support the asserted combination, such an expressed desire to combine proposals provides some impetus to consider features from each proposal as a compromise to create the new IEEE standard, and we consider that in our consideration of Petitioner’s other reasons.” slip op. at 32
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,212,146 - PTAB · Feb 27, 2024 · IPR2023-01311 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–20 based on all petitioned challenges, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this preliminary stage, we determine whether the information presented shows a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been unpatentable over the asserted prior art. We analyze Petitioner’s asserted challenges with the above-noted principles in mind.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “believes that no claim term requires construction.” Pet. 8–9. Patent Owner similarly asserts that it “does not believe any claim construction is necessary.” Prelim. Resp. 5. For purposes of this Decision, we conclude that no claim term requires express interpretation to resolve any controversy in this proceeding. 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 10 At this stage, neither party presents any objective indicia of non-obviousness. controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage, we disagree with Patent Owner. Regarding the arrangement of optical components in its backlight unit, Kobayashi specifies, for example, distance a from LED 1 to diffusing plate 5 and distance c from LED 1 to diffusing plate 4. Ex. 1006 ¶¶ 19–20, Fig. 1. Tabito teaches using optical stud members 25 to keep light diffusing plate 23 at a preset distance from light diffusing conducting plate 21. Ex. 1007 ¶ 60. That Kobayashi and Tabito both describe specific arrangements of optical components, and that the use of Tabito’s optical stud members was a known way to provide for such specific arrangements, is sufficient reason for combining Kobayashi and Tabito. Petitioner need only show that Tabito’s optical stud members would have been a “suitable option” for implementation in Kobayashi’s backlight unit. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023). We note Patent Owner’s contention that combining Kobayashi and Tabito “would result in completely different optical characteristics of [Kobayashi’s] lighting panel.” Prelim. Resp. 23. This contention, however, is unavailing. Our reviewing court has explained that “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but, “[r]ather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Additionally, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Here, Kobayashi teaches keeping its diffusing plates 4, 5 and LED 1 separated by specific distances. Ex. 1006 ¶¶ 19–20. Tabito teaches using its optical stud members 25 to keep optical elements separated by a preset distance. Ex. 1007 ¶ 60. We find that an ordinarily skilled artisan, in implementing Tabito’s optical stud members in Kobayashi’s backlight unit, would have made any necessary modifications (e.g., selecting different materials for the optical stud members) to maintain Kobayashi’s desired backlight performance in order to realize the advantages of using Tabito’s optical stud members as a way to support Kobayashi’s diffusing plates. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that its proposed combination of Kobayashi and Tabito teaches the recited limitations of claims 4–6 and 17, including the recited “diffuser supports.” See Pet. 34–41. We also are persuaded that Petitioner’s proffered reasoning for modifying Kobayashi’s backlight unit to include Tabito’s optical stud members, namely, to provide a way to implement Kobayashi’s specific arrangement of optical elements, is sufficient for purposes of this Decision. See Pet. 33; Intel, 61 F.4th at 1381 (explaining that the petitioner need only show that the proposed combination would have provided a “suitable option”).” slip op. at 37
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,177,382 - Intel Corporation v. Ax WirelessInstitutedPTAB · Feb 14, 2024 · IPR2023-01139 · APJ John D Hamann · IPR · Institution
The Board instituted IPR on claims 1–3, 5, and 7–9 on all asserted grounds, finding a reasonable likelihood that Intel would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)5 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 7
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a master’s degree in electrical engineering or similar discipline, and/or two to three years of experience working or conducting research in the field of wireless communication protocols, or an equivalent combination of education and experience.” Pet. 9 (citing Ex. 1003 ¶ 62). would have had at the time of the invention of the ’272 patent or identify any shortcoming in Petitioner’s formulation. Prelim. Resp. 2. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art. Pet. 9. As adopted, we view the definition for the level of ordinary skill is consistent with the ’272 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Here, neither party sets forth any term for claim construction. Pet. 10; Prelim. Resp. 3. Thus, for purposes of our Decision on Institution, we afford the claim terms their plain and ordinary meaning. See, e.g., 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 controversy, and only to the extent necessary to resolve the controversy.’”).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“awaiting peer review on an FTP server as “placing posters at an unpublicized conference with no attendees,” with no record that it “was accessible to anyone other than the peer-review committee.” SRI, 511 F.3d at 1197. Here, there is ample evidence that membership in the working group, attendance at its meetings, and access to its documents was available to the public. See Ex. 1007 ¶¶ 14 (meetings open to public); 15 (submissions presented at meetings and available to all participants); 18 (stating that “an interested member of the public could visit the 802wirelessworld website, click the ‘become a member ‘link . . . and download any submissions that had been uploaded”). Unlike SRI, WWiSE was not intended for a select group of people to review prior to its publication; instead, WWiSE was intended for public debate among the working group members to influence their choices for the new 802.11n standard. See Ex. 2001 ¶¶ 89 (WWiSE presentation in July 2005 presented aspects from the various TGn Sync and WWiSE proposals”). SRI is therefore also inapposite to the facts here. Of greater significance to the facts at hand is the court’s analysis in GoPro, Inc. v. Contour IP Holding LLC, 908 F.3d 690 (Fed. Cir. 2018). In GoPro, the court stated, “our case law directs us to also consider the nature of the conference or meeting; whether there are restrictions on public disclosure of the information; expectations of confidentiality; and expectations of sharing the information.” Id. at 694 (citing Medtronic v. Barry, 891 F.3d 1368, 1382 (Fed. Cir. 2018)); see also Valve Corp. v. Ironburg Inventions Ltd, 8 F.4th 1364, 1374 (Fed. Cir. 2021) (public accessibility indicated where “a publication’s purpose is ‘dialogue with the intended [public] audience’”). In GoPro, the court noted that the trade show at issue, “not unlike conferences . . . is directed to individuals interested in the commercial and developmental aspects of products.” GoPro, 908 F.3d at 694. The GoPro court determined that, although its trade show was open only to dealers rather than the general public, the document at issue “was disseminated with no restrictions and was intended to reach the general public.” Id. at 695. Like GoPro, WWiSE was disseminated with no expectation of confidentiality, as it was available to be shared by the TGn members through unrestricted download and by sharing the publicly available ftp site location and access credentials. Ex. 1007 ¶ 19. Public disclosure was encouraged, not restricted, as evidenced by the public nature of the TGn meetings at which proposals such as WWiSE were discussed by the working group. Id. ¶¶ 14, 18, 19. Moreover, the WWiSE proposals were known to the public as one of two finalist proposals considered for adoption as the new standard. globe at IEEE meetings,” “support has coalesced around two main proposals, from groups named TGn Sync and WWiSE.”). Also like GoPro, the relevant audience was involved in the meeting because the TGn group members and attendees of the 802.11 working group meetings were engineers, researchers, and business persons interested in networking technologies, including wireless local area networking (WLAN) technologies. Ex. 1017 ¶ 14; see also Ex. 2015, 311 (stating that “quite a few manufacturers of electronic devices that might use 802.11 (Cisco, Nokia, Nortel, Philips, Samsung, Sanyo, Sony, and Toshiba) have also become part of the effort”). Based on the above facts, we determine that Petitioner has sufficiently” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,917,272 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01137 · APJ Michael T Cygan · IPR · Institution
The Board instituted IPR on claims 1–3, 5, 7–11, and 13 on both §103 grounds, finding a reasonable likelihood that the Hansen-WWiSE combinations render the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 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.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’449 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’449 patent on all asserted grounds of unpatentability.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp” slip op. at 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We find Petitioner’s showing sufficient for institution. Petitioner asserts a combination of Hansen, which splits its Signal*-N field into two symbols, with WWiSE, which appends a second copy of a Signal-N field as an ER-Signal-N field. Ex. 1015 ¶ 97; Ex. 1006, Fig. 11, 69:13–18. WWiSE describes that the Signal-N-containing symbol is followed by the ER-Signal- N containing symbol, which supports Petitioner’s assertion that the combination would start with the first bits of the Signal-N header, which Hansen’s Signal-N header bits are split between two symbols, we do not agree with Patent Owner that there is no reason to split the Signal-N symbol into two symbols in the Hansen-WWiSE combination. We agree that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have found it obvious to try generating and sending two identical symbols followed by the other two identical symbols when combining Hansen and WWiSE. The application of common sense to try a limited number of known options within the technical grasp of a person of ordinary skill may indicate the obviousness of a combination. KSR, 550 U.S. at 421. When applying WWiSE’s teaching that ER-containing symbols follow non-ER symbols to Hansen’s two-symbol, non-ER Signal-N, we are persuaded by Dr. LaPorta’s testimony that a person of ordinary skill in the art would have anticipated success with either alternative 1 (NR symbol followed by same-bit ER symbol) or alternative 2 (both NR symbols followed by both ER symbols). Ex. 1003 ¶¶ 163–165. Because alternative 1 provides the order required by limitations [1J] and [1K], we determine that Petitioner has sufficiently shown its asserted combination to teach those limitations.” slip op. at 30
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020)). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-court decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 44
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,291,449 - Intel Corporation v. Ax Wireless, LLC.InstitutedPTAB · Feb 14, 2024 · IPR2023-01135 · APJ Michael T Cygan · IPR · Institution
Instituted IPR on claims 1–3, 5, 7–11, and 13 based on two obviousness grounds: Hansen with WWiSE, and Hansen with WWiSE and Choi.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 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.” For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–3, 5, 7–11, and 13 of the ’361 patent. Accordingly, we institute an inter partes review as to claims 1–3, 5, 7–11, and 13 of the ’361 patent on all asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Memorandum titled Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022)7 (“Fintiv Memo”). The Fintiv Memo sets forth, inter alia, that the Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and district-” slip op. at 43
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“printed publication is whether it was publicly accessible at the critical time. SRI Int’l v. Internet Security Systems, Inc., 511 F.3d 1186, 1194 (Fed. Cir. 2008). Public accessibility exists where the reference document “has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed. Cir. 2006)). Patent Owner argues that a relevant person of ordinary skill using reasonable diligence would not reasonably have located the paper residing on the TGn ftp site. Prelim. Resp. 3–4. We discern three potential avenues for public availability in the assertions set forth by Petitioner: (1) availability to the members of TGn through the Wireless World website; (2) availability to others through the ftp site; and (3) availability to others through Mentor. We address each in turn, taking into account Patent Owner’s arguments.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“shown, for purposes of institution, that each element of claim 1 has been taught or suggested by the combined teachings of Hansen and WWiSE. Further, that Petitioner has sufficiently shown, for purposes of institution, that a person having ordinary skill in the art would have reason to combine the teachings of Hansen and WWiSE as suggested by Petitioner, and would have a reasonable expectation of success in doing so. On the record before us, and for purposes of institution, Petitioner has sufficiently shown that claim 1 would have been obvious over Hansen and WWiSE. 4. Claims 2–3, 5, 7–11, and 13 Petitioner provides a detailed analysis of the limitations of claims 2–” slip op. at 38
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,973,361 - Intel Corporation v. Ax Wireless, LLCInstitutedPTAB · Feb 14, 2024 · IPR2023-01136 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted review of claims 1–3, 5, 7–11, and 13 on all asserted grounds, finding a reasonable likelihood that at least one claim is unpatentable under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we institute an inter partes review as to the challenged claims of the ’707 patent on the grounds presented.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedDecided for petitioner
“asserted reference qualifies as prior art is public accessibility. See In re Hall, 781 F.2d 897, 899 (Fed. Cir. 1986). “[A]t 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, 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Id. We determine that Petitioner’s showing that a skilled artisan would have been motivated to combine the relevant teachings of Hansen and July 2005 WWiSE based on the express suggestions in these references supporting their combination is reasonable and supported. Petitioner also argues: [A] POSITA would have been motivated to combine Hansen and July 2005 WWiSE because the combination is merely the application of a known technique (July 2005 WWiSE’s ER capability) to a known device (device with Hansen’s “compromise” greenfield PPDU) ready for improvement and use of a known technique (July 2005 WWiSE’s ER capability) to improve similar devices (device with Hansen’s “compromise” greenfield PPDUs) in the same way (providing ER capability). See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415- 421 (2007). The addition of ER capability to Hansen would have been seen by a POSITA as an improvement to a device using Hansen’s “compromise” greenfield PPDU because ER extends the range of reliable communication between a transmitter and receiver by providing diversity to overcome environmental conditions (e.g., fading and/or noise). (INTEL- 1003, ¶95.) A POSITA would have applied the known improvement (ER capability of July 2005 WWiSE) in the same way to Hansen because Hansen’s “compromise” greenfield PPDU has a similar structure to the greenfield PPDU disclosed in WWiSE. (INTEL-1003, ¶95; compare INTEL-1005, Figure 5a with INTEL-1006, Figure 007.) Pet. 23–24 (emphasis added). This argument is reasonable and supported.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Board will not discretionarily deny institution under § 314(a) when a petitioner submits a so-called Sotera stipulation, i.e., the 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.” Fintiv Memo 7 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020). A Sotera stipulation mitigates concerns of potentially conflicting PTAB and districtcourt decisions and duplicative efforts between the district court and PTAB. Id.” slip op. at 50
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,079,707 - PTAB · Jan 23, 2024 · IPR2023-01168 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–5 and 7–14 under all asserted obviousness grounds, finding a reasonable likelihood of unpatentability on at least one challenged claim.
RulingsInstitution decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownOther
“On the record before us, we determine that the second part of Patent Owner’s proposed construction is overly narrow. The claim language recites nothing about air gaps, let alone excluding air gaps between layers. Ex. 1001, claim 1. As our reviewing court has explained, “it is the claims[] . . . which define the scope of the patent right.” Laitram Corp. v. NEC Corp., 163 F.3d 1342, 1347 (Fed. Cir. 1998). Additionally, the ’835 patent says that “intervening elements may also be present.” Ex. 1001, 6:66–7:3. 9 Patent Owner cites “’075 Pat., col. 6:47–51,” which does not appear to be of record. The quoted language appears at Ex. 1001, 6:66–7:3. The ’835 patent does not say anything about excluding air gaps between layers. Accordingly, we see no reason why an intervening element would exclude an air gap.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We disagree with Patent Owner. Although a larger distance between the diffuser and the reflective surface of the base panel may improve light uniformity, Patent Owner essentially alleges there would be tradeoffs in combining Mok and Holman to reduce panel thickness. Our reviewing court, however, has explained that “[t]he fact that [a] motivating benefit comes at the expense of another benefit . . . should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another.” See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000). The relative advantages (e.g., reduced panel thickness) and disadvantages (e.g., reduced light uniformity) of modifying Mok’s lighting panel to include Holman’s stacking arrangement amount to a tradeoff, a decision well within the level of an ordinarily skilled artisan. Indeed, Mok acknowledges this tradeoff. See Ex. 1005 ¶ 23 (“Generally speaking, larger spaced-distances 48 will improve the uniformity of the light produced by the panel, but at the expense of panel thickness and some loss of efficiency.”). Accordingly, Patent Owner’s teaching away argument does not undermine Petitioner’s showing for limitation 1D. On the record before us, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that limitation 1D is satisfied under both theories. With respect to Petitioner’s first theory, we are persuaded that Mok’s brightness enhancer 18 teaches the recited “brightness enhancement film” of limitation 1D. With respect to Petitioner’s second theory, we are persuaded that Petitioner’s proposed combination of Mok and Holman teaches the recited “brightness enhancement film” of limitation 1D. We also are persuaded that Petitioner’s proffered reasoning for modifying Mok’s lighting panel to include Holman’s stacking arrangement, namely, to reduce panel thickness, is sufficient to support institution. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[T]here must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”).” slip op. at 23
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated on the record before us a reasonable likelihood that it will prevail in showing at least one of the challenged claims of the ’835 patent is unpatentable. Although we express concerns regarding Petitioner’s analysis regarding certain of the challenges presented, we institute trial on all challenged claims and all challenges presented. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”); 37 C.F.R. § 42.108(a) (“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.”). We have not, however, made a final determination with respect to the patentability of the challenged claims or the constructions of any claim terms. V. ORDER For the reasons given, it is ORDERED that inter partes review is instituted as to all challenged claims of the ’835 patent, namely, claims 1–5 and 7–14, based on all challenges presented in the Petition; and” slip op. at 61
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,605,835 - Apple Inc. v. Sonrai Memory LimitedInstitutedPTAB · Dec 14, 2023 · IPR2023-00975 · APJ John D Hamann · IPR · Institution
The Board instituted review of claims 1, 3, 5, 7, 11–13, and 15 on all asserted grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.108 (2022). Upon consideration of the papers, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’014 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv factors 1–5. Because our analysis is fact driven, no single factor is determinative of whether we exercise our discretion to deny institution under § 314(a). Considering these Fintiv factors as part of a holistic analysis, we are persuaded that the interests of the efficiency and integrity of the system would be best served by invoking our authority under § 314(a) to deny institution. Thus, we now turn to a compelling merits analysis under factor six. See CommScope Technologies LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23, at 5 (PTAB Feb. 27, 2023) (precedential, decision upon Director review) (“In circumstances where . . . the Board’s analysis of Fintiv factors 1–5 favors denial of institution, the Board shall then assess compelling merits.”).” slip op. at 11
- Parallel petitionsDecided for petitioner
“We agree with Petitioner that under the circumstances of this proceeding, “[t]he potential priority dispute between the two parties justifies institution of the two petitions.” Notice 4. In particular, the CTPG “recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, . . . when there is a dispute about priority date requiring arguments under multiple prior art references.” CTPG, 59. The CTPG provides that a “patent owner may seek to avoid additional petitions by proffering a stipulation . . . that certain references qualify as prior art.” Id. at 61. Patent Owner makes no such stipulation here. See Prelim. Resp. 13–16.” slip op. at 14
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s definition of the level of skill for one of ordinary skill in the art, except we decline to adopt As adopted, we view the definition for the level of ordinary skill is consistent with the ’014 patent and the asserted prior art, and we apply it in our analysis below.” slip op. at 15
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 6,874,014 - PTAB · Dec 11, 2023 · IPR2023-00977 · APJ St John Courtenay III · IPR · Institution
Instituted IPR of claims 1–20 on all petition grounds after finding a reasonable likelihood that the Casagrande, Russ, and Miller combination renders at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“12. Conclusion for Claim 1 under Ground 1 Based upon the present record, we find Petitioner has shown sufficiently that Casagrande, Russ, and Miller collectively teach or suggest all the limitations of independent claim 1. In addition, we find Petitioner has set forth sufficient reasons for combining these references with a reasonable expectation of success. Having considered the arguments and evidence presented by both the Petitioner and Patent Owner, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“preliminary record. Petitioner presents detailed support for the similarities among the references. Pet. 13–14. And, more specifically, as to the rationale to combine Russ with Casagrande, Petitioner’s motivation that it would offer an improvement is supported by Dr. Jeffay’s testimony of a resulting financial value to a broadcaster (Ex. 1002 ¶ 137) by the modification, which we find is sufficient at this juncture. fully aware that hindsight bias often plagues determinations of obviousness, Graham, 383 U.S. at 36, we are also mindful that the Supreme Court guides that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 401 (citation omitted). Here, at this juncture, we credit Dr. Jeffay’s testimony that Miller identifies techniques that offer advantages to Casagrande’s and Russ’s DVR system. See Ex. 1002 ¶¶ 103–105. Dr. Jeffay also testifies that the combination would have had predictable results, and a person of skill “would have been motivated to look to the teachings of Miller which describe the known process of using multiplexed signals alongside one or more tuners to deliver video content.” Id. ¶ 105. Additionally, as discussed above, we are not persuaded by Patent Owner’s argument that Miller teaches away, because we do not find that this argument applies— Petitioner does not rely upon Miller for teaching limitation 1[b], i.e., the storage of a plurality of video programs. 12. Conclusion for Claim 1 under Ground 1 Based upon the present record, we find Petitioner has shown sufficiently that Casagrande, Russ, and Miller collectively teach or suggest all the limitations of independent claim 1. In addition, we find Petitioner has set forth sufficient reasons for combining these references with a reasonable expectation of success.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“proceeding if the challenge to the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8. We consider several non-exclusive factors as set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 Dickinson”), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, 9. These non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, 17–18 (formatting added). “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, 10.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Jeffay, Petitioner contends that an ordinarily skilled artisan for the ’122 patent “would have been someone with at least a bachelor of science in electrical engineering, computer engineering, computer science or a similar technology degree, as well as two years of relevant industry experience, including Internet networking architectures, digital programming delivery, and STBs.” Pet. 9 (citing Ex. 1002 ¶ 41). At this stage, Patent Owner “does not dispute the level of skill of a person of ordinary skill in the art . . . [as] identified in the Petition.” Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’122 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,538,122
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.