- PTAB · Aug 13, 2024 · IPR2024-00557 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1–8, 11, 12, and 15–21 on all asserted grounds, finding a reasonable likelihood that at least claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“III. DISCRETIONARY DENIAL UNDER 35 U.S.C. § 314(a) Immersion argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’067 patent. Prelim. Resp. 50–56 (discussing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co- 1 Banerjee et al., US 2017/0108930 A1, published Apr. 20, 2017 (Ex. 1011). 2 Meglan et al., US 2012/0045742 A1, published Feb. 23, 2012 (Ex. 1012). 3 Rogers et al., US 2017/0354864 A1, published Dec. 14, 2017 (Ex. 1010). pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board addressed nearly exactly the same arguments and issues raised by Immersion here. We adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.”). Therefore, we do not discretionarily deny the Petition.” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties agree that formal education could substitute for practical experience, and vice versa. Pet. 6, Prelim. Resp. 12. The parties’ proposed levels of ordinary skill appear to be substantially similar, are both supported by testimonial evidence, and appears to be consistent with the asserted prior art and the types of problems and solutions in the ’067 patent. See, e.g., Ex. 1001, 1:7–53. At this stage, we discern no difference in the outcome of this decision from choosing one over the other. We adopt Valve’s proposed level of skill for this decision because it is sufficiently persuasive to meet Valve’s “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms explicitly. Pet. 7–9 (citing Ex. 1001, 3:1–4, 5:60–62; Ex. 1003 ¶¶ 77– 80; Ex. 1006, 4–5); Prelim. Resp. 13. We agree that, for the purpose of institution, we do not need to adopt explicit constructions for any claim terms. To the extent that the meaning of any claim term is disputed, we discuss it below in the context of the prior art. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(g) Conclusion as to claim 1. For the above reasons, we determine that Valve has shown, sufficiently at this stage, that Banerjee discloses all the limitations of claim 1, or at least that a person of ordinary skill in the art would have had reason, in view of Banerjee, to combine features, including a sensor, as recited in claim 1. We therefore determine that Valve is reasonably likely to prevail in showing that claim 1 is unpatentable under §§ 102 or 103 based on Banerjee. 3. Other Claims Because Valve has shown a reasonable likelihood of prevailing with respect to claim 1 as discussed above, we will institute on all claims and all grounds raised in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,665,067 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00566 · APJ Donna M Praiss · IPR · Institution
The Board instituted IPR on claims 1, 5, 6, 8, 9, 15, and 16 on all asserted grounds, finding a reasonable likelihood that claim 1 is unpatentable over Banerjee.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute inter partes review, we must determine that the information presented in the Petition shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons discussed below, after considering the parties’ submissions and the evidence of record, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to at least one claim of the ’657 patent, and we determine inter partes review of all claims and all grounds asserted in the Petition.1” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).9 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Guidance Memo” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial. For the purposes of this Decision, we need not expressly construe any” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“On the present record, we determine that Petitioner has shown sufficiently that Banerjee teaches outputting software intended to be installed on the designed integrated circuit that is capable of controlling the device into which the designed integrated circuit is installed. At paragraphs 72–83, Banerjee discloses the operation of its operating system optimization module. Ex. 1005 ¶¶ 38, 72–83. In particular, Banerjee teaches that the operating system optimization module can “compile a symmetric multiprocessing operating system” and that “the optimized operating system is compiled into a reduced footprint operating system that is instantiated in the device.” Id. ¶¶ 82–83. Because Banerjee teaches both compiling an operating system and instantiating that operating system in the designed device, the present record shows sufficiently that Banerjee teaches outputting software to run on the designed device. Patent Owner’s declarant, Joseph C. McAlexander III, P.E., disagrees with this interpretation, testifying that Banerjee’s paragraph 83 teaches only “compil[ing] the characteristics of the typical or ‘baseline’ ‘operating system configuration’ . . . in order to analyze its expected ‘footprint’ on the IC and how it is expected to be instantiated on the device.” Ex. 2001 ¶ 65. But the idea that Banerjee is concerned only with analyzing how the operating system is expected to be instantiated appears to contradict Banerjee’s teaching that the “reduced footprint operating system . . . is instantiated in the device,” which suggests actual, not merely expected, instantiation in the device. On the present record, beyond stating that “Banerjee only outputs a hardware description file,” Mr. McAlexander does not explain why Banerjee should be interpreted in this alternate fashion. Id. ¶ 66 (citing Ex. 1005 ¶¶ 44, 69, 84). There is no explanation of why the cited paragraphs of Banerjee should be interpreted to limit Banerjee’s disclosure (which, as discussed above, includes a teaching that the operating system is compiled and instantiated in the designed device) to merely outputting a hardware description file. Id. Accordingly, on the present record, Petitioner has shown sufficiently that Banerjee teaches or suggests limitation 1[d].” slip op. at 15
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,367,657 - ARM Limited v. Icpillar LLCInstitutedPTAB · Aug 7, 2024 · IPR2024-00476 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 1, 5, 6, 8, and 14 on all asserted grounds, finding a reasonable likelihood that Banerjee renders at least claim 1 obvious.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art would be “familiar with automated circuit design” and “possess[] this knowledge through training and work experience, including have a Bachelor’s or Master’s Degree in computer science, electrical engineering, or a related field, with at least three years of practical experience.” Pet. 11–12. At this stage of the proceeding, Patent Owner does not challenge the Petitioner’s definition of a person of ordinary skill in the art. See Prelim. Resp., generally. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’899 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“According to Petitioner, the term should be broadly construed to encompass “internal outputs from compilers that are then used by other portions of the design” and “any form of software or mechanics of ‘providing’ software.” Prelim. Reply 1–3. Petitioner contends that the term must be construed broadly to encompass the embodiment shown in the ’899 patent’s Figure 4 illustrating output 71 of compiler 67, which is an internal input to ASIC Design 69 described as “a circuit design such as a layout or a schematic that can be sent out to a manufacturer for fabrication.” Id. at 1–2 (quoting Ex. 1001, 9:59–61) (emphasis omitted). Petitioner directs us to the disclosure that Figure 4’s output 71 (ASIC Programming) “may be software to be programmed and/or stored in a fabricated ASIC.” Id. at 2 (quoting Ex. 1001, 9:61–62) (emphasis omitted). Petitioner contends that the ’899 patent defines “software” broadly. Id. Specifically, Petitioner directs us to a portion of the ’899 patent’s specification that states “[h]erein, reference to software may encompass one or more applications, byte code, one or more computer programs, one or more executable, one or more instructions, logic, machine code, one or more scripts, or source code, and vice versa where appropriate.” Ex. 1001, 17:6–10. Patent Owner asserts that Petitioner’s proffered claim construction is incorrect because the language of the claim itself “does not suggest ‘internal’ software for use by the design tool, nor that the second recited ‘output[]’ could be part of the first.” Prelim. Sur-Reply 2. According to Patent Owner, viewed in context, the ’899 patent defines “software” broadly for “an exemplary computer system, not the invention’s outputs.” Id. Patent Owner asserts this definition describes the software types that a computer could execute, not a definition of “software programming commands” recited in claim 1[d]. Id. Regarding the ’899 patent’s Figure 4, Patent Owner asserts that Petitioner has not shown that Programming 71 must be an internal output for internal use because both Design 69 and Programming 71 are shown as outputs, not inputs, of the compiler. Id. at 4. Regarding the term “layout,” Patent Owner asserts this is merely a description of physical hardware for fabrication and that “[i]t is impossible for ‘software programming commands’ to be ‘stored in “layouts.”’ Id. at 3 (citing Ex. 2001 ¶¶ 32, 76, 90). For purposes of this Decision, we construe the term “outputting by the processor software programming commands to be executed by the hardware integrated circuit for controlling the electronic device” as referring to software programming commands that are capable of controlling an electronic device, that are output by a processor, and that are not merely a circuit design for fabrication. We emphasize that this construction is preliminary and based on the current record; to the extent the parties wish to argue for a different construction or to further clarify this construction, we encourage them to present arguments and supporting evidence at trial.” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“clarifications concerning the application of the Fintiv factors. See Interim Procedure For Discretionary Denials In AIA Post-Grant Proceedings With Parallel District Court Litigation, issued June 21, 2022 (“Guidance Memo”).5 The Guidance Memo clarifies “the PTAB’s current application of Fintiv to discretionary institution where there is parallel litigation.” Id. at 2. The Guidance Memo instructs us not to “discretionarily deny institution in view of parallel district court litigation where a petitioner presents a 5 Available at https://www.uspto.gov/sites/default/files/documents/interim_ proc_discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf. stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Id. at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). When such a stipulation is offered after the Board’s decision on whether to institute review, it is too late to gain the benefit of the rule articulated in the Guidance Memo. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13, 4 (PTAB Sept. 7, 2022) (precedential). Here, Petitioner “stipulates ‘not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.’” Prelim. Reply 10 (quoting Ex. 1020, 1). Petitioner offered this stipulation prior to a decision on whether to institute review, so it is timely under NXP. Accordingly, pursuant to the Guidance Memo, we do not exercise discretion under Fintiv to deny institution.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“c) Conclusion Regarding Claim 1 Based on the current record, we determine that there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Banerjee. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 3. Claims 5, 6, 8, and 14 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’899 patent is unpatentable, we institute on all grounds and all claims raised in the Petition. See 37 C.F.R. § 42.108(a). Therefore, at this stage of the proceeding, it is not necessary for us to provide an assessment of every challenge raised by Petitioner, especially, as in this case, when Patent Owner does not separately argue those claims. Those challenges, in our view, are best left for trial after full development of the record.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,924,899 - PTAB · Aug 6, 2024 · IPR2024-00556 · APJ William V Saindon · IPR · Institution
The Board instituted review of claims 1–18 on all grounds, finding a reasonable likelihood that claim 1 would have been obvious over Astala and Shahoian and over Keely and Kolmykov-Zotov.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“II. DISCRETIONARY DENIAL Patent Owner argues that the Petition should be denied under 35 U.S.C. § 314(a) because there is a district court case involving the ’507 patent. Prelim. Resp. 43–49 (discussing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). However, the co-pending district court litigation has been stayed. Ex. 2004, 8. In Valve Corp. v. Immersion Corp., IPR2024-00478, Paper 11 at 9–18 (PTAB July 25, 2024), the Board was faced with substantially similar arguments and issues raised by Patent Owner here; we adopt and incorporate the reasoning in that case as our own. In short, the stay obviates concerns over efficiency and duplicity of efforts raised in Fintiv. See, e.g., Fintiv at 6 (“[a] district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts”). Therefore, we do not discretionarily deny the Petition.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314(b) and 37 C.F.R. § 42.4(a). 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 provided below, we determine that Petitioner has satisfied the threshold requirement set forth in 35 U.S.C. § 314(a). Because Petitioner has demonstrated a reasonable likelihood that at least one claim of the ’507 patent is unpatentable, we institute an inter partes review. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both proposed levels of skill appear to be substantially similar and reasonable in view of the disclosures in the ’507 patent and asserted prior art. At this time, we would discern no difference in outcome from choosing one over the other. We adopt Petitioner’s proposed level of skill for purposes of this Decision because it appears to be a reasonable definition and Petitioner bears only a “reasonable likelihood” burden at institution. 35 U.S.C. § 314(a).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“time interval has elapsed.” Prelim. Resp. 18. We disagree that the claims preclude any particular combination of events, so long as the three conditions are satisfied in the process of determining of a press. The claim does not specify or limit the ways in which the three conditions need to be satisfied to determine a press, and Patent Owner offers no claim construction analysis that would so limit the claims. In sum, we agree with Petitioner at this stage that the three conditions of the “determining a press” limitation are independent insofar as satisfaction of one condition is not predicated on the satisfaction of another condition. In our view, however, that point is merely reciting what the claim already states: that “determining a press” is defined as the satisfaction of the three claimed conditions. Claim 1 does not set out any further requirements. Thus, we do not see the need to construe the claim beyond its plain language. We do not explicitly construe any terms in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claims. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms. . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,749,507 - PTAB · Aug 6, 2024 · IPR2024-00508 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–18, 21–24, and 26–29 on all petitioned grounds after finding a reasonable likelihood that claim 1 is anticipated by or obvious over Rosenberg.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner’s analysis persuasively demonstrates a reasonable likelihood of success of showing that the subject matter of claim 1 is unpatentable. That Rosenberg varies, or modulates, its haptic effect based on the input signal, and specifically the degree to which the input signal represents a value close to a target value, persuades us on this record that Rosenberg describes the recited “modulating” limitation. On whole, reviewing the Petition and the evidence cited therein, we determine that Petitioner has established a reasonable likelihood that claim 1 is anticipated by, or would have been obvious in view of, Rosenberg.” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art (POSA) would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry experience or graduate-level academic experience with human-computer interaction. Pet. 7 (citing Ex. 1003 ¶¶ 40–45). This level of skill appears reasonable in view of the disclosures in the ’546 patent and asserted prior art. We adopt Petitioner’s proposed level of skill for purposes of this Decision.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In our view, on this record, the first construction is too narrow. It adds limitations from the specification that are not found in the claims, namely, the term “continuous” or “continuously.” i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 843–44 (Fed. Cir. 2010) (“[A] claim is not limited to the embodiments described in the specification unless the patentee has demonstrated a clear intention to limit the claim’s scope with words or expressions of manifest exclusion or restriction.”) (internal quotation marks omitted). There is no requirement that the claims must recite all the features of the specification, and we are not persuaded on this record that the claim requires this absent word. The second potential construction offered by Petitioner states that it “would not require the ‘new input’ mapping to the modulated haptic signal to be received immediately after earlier input that was mapped to a haptic signal.” Pet. 22. Petitioner states that the second construction would cover situations where an input sensor is mapped to a haptic signal but later new inputs are not mapped to a haptic signal, and then even later new sensor input is mapped to a haptic signal. Id. Petitioner does not provide further explanation, and it is not clear to us on this record what the construction would be. Instead, the second potential construction merely seems to be an example of a situation in which Petitioner asserts the claim limitation would be met. In sum, we do not adopt either of Petitioner’s proposed constructions. We do not offer our own construction at this time, however, because we believe that construing the claim limitation is unnecessary for the purpose of institution. Instead, we will focus on the plain language itself, “modulating the haptic signal when new input is received,” when reviewing Petitioner’s prior art grounds. We do not explicitly construe any terms in this Decision at this time” slip op. at 7
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 9,116,546 - PTAB · Jul 25, 2024 · IPR2024-00478 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–19 on all asserted grounds, finding a reasonable likelihood of success on anticipation by Rosenberg-I.
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) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In view of the above, we determine that this factor strongly weighs against the exercise of discretionary denial. 2. Factor 2: proximity of the court’s trial date to the Board’s projected” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 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 8
- Skill levelOther
“would have a bachelor’s degree in electrical engineering, computer science, or a related field, plus at least two years of industry or graduate level experience with software engineering, haptics programming, and/or human-computer interaction, including experience with user-interfaces and applications involving touchscreens, touchpads, and related technologies.” Pet. 8 (citing Ex. 1003 ¶¶ 37–43). Patent Owner contends that a person having ordinary skill in the art “would have had a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction (HCI), including implementation of computer-based systems and software for providing haptic feedback effects to a user,” and adds that a person having ordinary skill in the art “could have qualified . . . with more formal education and less practical or industry experience, or vice versa.” Prelim. Resp. 9 (citing Ex. 2001 ¶ 32). Although not identical, the parties’ definitions are substantially similar. Accordingly, for purposes of this Decision, we determine that no express finding is necessary, and that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We note, however, that our obviousness analysis in this Decision would not differ if we adopted either Petitioner’s or Patent Owner’s definition. slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 9,430,042 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00398 · APJ Elizabeth J Reagan · IPR · Institution
The Board instituted IPR on claims 1–12 and 15–20 based on all asserted grounds, finding a reasonable likelihood of success on claim 10 over Kalliola, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). Institution of an inter partes review requires that “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 [one] 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that there is a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review on all of the challenged claims of the ’680 patent based on all of the asserted grounds of unpatentability identified in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“art, “at the time of the ’680 Patent would have been a person having a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2–4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming” but that “[a]dditional industry experience or technical training may offset less formal education, while advanced degrees or additional formal education may offset lesser levels of industry experience.” Pet. 4–5 (citing Ex. 1003 ¶ 35). We find that Petitioner’s proposal is consistent with the evidence of record, including the asserted prior art of the ’680 patent. This proposal is also supported by the Buehrer Declaration. See Ex. 1003 ¶ 35. Accordingly, we adopt Petitioner’s proposed level of ordinary skill in the art for purposes of this Decision.9” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionNo construction neededOther
“construction in a parallel proceeding,11 for the following term: “[a] pairing signal.” Pet. 6 (emphasis omitted) (citing Ex. 1009, 15–16). Petitioner proposes that we construe “[a] pairing signal” as “[p]rocessor signal to initiate a wireless device pairing sequence.” Id. (emphasis omitted) (quoting Ex. 1009, 15–16). On the present record, Patent Owner does not dispute this proposed construction.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“ordinary skill in the art to “combine the prior art elements of Kalliola’s WCD communicating with a signal emitter via Bluetooth with Vauclair’s pairing menu and processor signals to yield the predictable result of a pairing signal in response to a first indication from a user to pair the WCD to the signal emitter” because “Bluetooth pairing and pairing menus were conventional well prior to the invention of the ’680 patent” and “there would have been a reasonable expectation of success.” Pet. 36 (citing Ex. 1003 ¶ 175; Ex. 1004 ¶ 4).” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,265,680 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00400 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 20–27 on all asserted grounds, finding a reasonable likelihood that claim 20 would be unpatentable as obvious over the Sweeney combination.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2023).” slip op. at 2
- Parallel petitionsDecided for petitioner
“v. Apple Inc. (W.D. Tex.), as a related proceeding. The parties disagree about the case number of the related case, with Petitioner identifying it as Case No. 6:23-cv-00077 and Patent Owner identifying it as Case No. 1:23- cv-00548-OLG. Pet. 82; Paper 6, 1. Petitioner also challenges claims 1–19 of the ’246 patent in a parallel petition filed in IPR2024-00399.1 See Paper 3, 1.” slip op. at 3
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“receive telephone calls via a telephony network and to communicate Internet data.” Ex. 1001, 40:23–25. Petitioner argues that the combination of Kalliola and Turunen teaches this limitation and that a person of ordinary skill in the art would have had a reason to combine the teachings of these references with those of Sweeney. Pet. 26–30. On the present record, Patent Owner does not dispute this argument. Kalliola teaches that its wireless communication device includes “[l]ong-range communications” that “performs functions related to the exchange of information over large geographic areas (such as cellular networks) via an antenna.” Ex. 1006 ¶ 46, Fig. 3. The methods used for these long-range communications include “basic voice communications (e.g., via GSM).” Id. ¶ 46. Turunen teaches the transmission of internet data between a mobile device and the internet. Ex. 1007, 5:30–38. Dr. Buehrer testifies that a person of ordinary skill in the art would have expected Sweeney’s wireless device to be capable of sending and receiving telephone calls using the GSM network taught by Kalliola. Ex. 1003 ¶¶ 179–181. Dr. Buehrer also testifies that a person of ordinary skill in the art would have been motivated to modify the mobile device of Sweeney and Kalliola to be capable of internet data communications over Kalliola’s GPRS link. Id. ¶ 182.” slip op. at 16
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - Apple Inc. v. THL Holding Company, LLCInstitutedPTAB · Jul 25, 2024 · IPR2024-00399 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–19 on all asserted grounds, finding a reasonable likelihood that claim 1 would have been shown obvious over Kalliola, Turunen, Oswald, Vauclair, and Kalayjian.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under [35 U.S.C.] section 311 and any response filed under [35 U.S.C.] 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) (2023). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims, and we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“1 Patent Owner does not request that we exercise our discretion to deny institution of either parallel petition. On the present record, we find that Petitioner’s explanation of the need for two parallel petitions is sufficient to justify not exercising discretion to deny institution in either case. The parallel petitions challenge different sets of claims of the ’246 patent, and there are a large number of claims challenged collectively between the two petitions.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field and 2-4 years of experience with wireless ranging and positioning systems, wireless communication devices, and associated computer programming.” Pet. 4 (citing Ex. 1003 ¶ 35). Patent Owner does not dispute Petitioner’s assertion on the present record. Prelim. Resp. 1–22. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’246 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Buehrer. See Ex. 1003 ¶ 35.10” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Petitioner proposes construing two terms. Pet. 5–6 (citing Ex. 1011, 6–11). First, Petitioner proposes that we construe “[t]ime of flight calculations” as “[d]etermining the amount of time between when a signal is transmitted and when a reply signal is received.” Id. at 6. Second, Petitioner proposes that we construe “[s]ignal delay” as “[d]ifference in time between when a signal is received at two or more antennas.” Id. On the present record, Patent Owner does not dispute these proposed constructions. Prelim. Resp. 1–22. For the purposes of this Decision, we adopt the constructions proposed by Petitioner. Those constructions are supported by briefing in the parallel district court case, in which they were proposed by Patent Owner. Ex. 1011, 6–11.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,350,246 - PTAB · Jul 24, 2024 · IPR2024-00477 · APJ Patrick R Scanlon · IPR · Institution
Instituted IPR of claims 1–7 on all asserted grounds because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
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) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“does not provide any authority supporting its position that failure to provide a Sotera stipulation “neutralizes” or “undercuts” the impact of a stay. We also disagree with Patent Owner’s suggestion that a district court stay can make discretionary denial inappropriate only when coupled with a Sotera stipulation. See Prelim. Resp. 59. Again, Patent Owner does not provide any authority supporting this position. Id. Contrary to Patent Owner’s positions, Fintiv indicates a district court stay “has strongly weighed against exercise of the authority to deny institution” independent of whether a Sotera stipulation—or any other type of stipulation—has been submitted. Fintiv at 6.” slip op. at 14
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Other
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,336,260
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.