- Google LLC v. 138 East LCD Advancements LimitedInstituted in partPTAB · Jan 8, 2025 · IPR2024-00957 · APJ George R Hoskins · IPR · Institution
The Board instituted review of claims 1–8, 10–16, and 18 on all petitioned grounds, but did not institute review of disclaimed claims 9 and 17.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), institution of review requires the information in the record to demonstrate a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim. Applying that standard on behalf of the Director (37 C.F.R. § 42.4(a)), we institute an inter partes review to determine whether Petitioner demonstrates by a preponderance of the evidence that claims 1–8, 10–16, and 18 are unpatentable, considering all grounds in the Petition directed to those claims. We do not institute review as to claims 9 and 17 on any ground because they have been disclaimed. See 37 C.F.R. § 42.107(e).” slip op. at 2
- Adverse judgmentAdverse judgment
“disclaimer,” and “[n]o inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). As a result of the statutory disclaimer, claims 9 and 17 are no longer regarded as claims challenged in the Petition. See Vectra, 162 F.3d at 1383 (“This court has interpreted the term ‘considered as part of the original patent’ in section 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)); see also Sanofi-Aventis U.S., LLC v. Dr. Reddy’s Labs., Inc., 933 F.3d 1367, 1372–75 (Fed. Cir. 2019) (disclaimer of claims during District Court patent infringement litigation “mooted any controversy” over the disclaimed claims, ending the Article III case or controversy requirement for District Court jurisdiction). In considering Federal Circuit precedent and our rules, we conclude we cannot institute a trial on claims that have been disclaimed, and, thus, no longer exist. Our conclusion is consistent with the statutory scope of inter partes review as laid out in 35 U.S.C. §§ 311(b) and 318(a) and is not at odds with SAS, supra. See, e.g., SAS, 584 U.S. at 367 (recognizing that “the claims challenged ‘in the petition’ will not always survive to the end of the case; some may drop out thanks to the patent owner’s actions”). Accordingly, we treat claims 9 and 17 as having never been part of the ’056 patent, such that Petitioner cannot seek inter partes review of those claims. Thus, we deny institution of review as to whether disclaimed claims 9 and 17 are unpatentable per Petitioner’s Grounds Three and Four.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 8; Ex. 2001 ¶¶ 27–28. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’056 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner argues “[n]o terms need to be construed . . . to resolve unpatentability.” Pet. 16–17. “Patent Owner contends that the claim terms should receive their ordinary and customary meaning in light of the specification and prosecution history, as understood by a person of ordinary skill in the art.” Prelim. Resp. 8. Patent Owner does not proffer any constructions for particular terms. See id. Based on the arguments and evidence presented at this time, we determine no explicit construction is needed to resolve the parties’ controversy. 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 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,454,056 - PTAB · Jan 7, 2025 · IPR2024-01052 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–20 on all four asserted obviousness grounds, finding a reasonable likelihood of success and insufficient nexus for GoPro’s objective-indicia evidence.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final but are made solely to determine whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. 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. We hereby institute an inter partes review as to claims 1–20 of the ’832 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have the following characteristics: “a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing or digital cameras[; a]lternatively, . . . four years of experience working on image or video processing or digital 7 Objective evidence of nonobviousness is presently asserted. Prelim. Resp. 23–30. cameras.” Pet. 6 (citing Ex. 1002 ¶¶ 36–38). Petitioner further contends “[a]n advanced graduate degree in the disciplines cited above may make up for the work experience indicated above.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’832 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“any viewing window determined for frames of a video is sufficient to be a function of progress merely because they are frames of a video that can be played back.” Prelim. Resp. 14. This argument is unpersuasive because it does not consider the entire context of claim 1. The relevant recitation requires more than just playback; instead, the recitation requires determining “a viewing window for the visual content as a function of progress through the progress length based on the rotational positions of the image capture device as the function of progress through the capture duration.” Ex. 1001, 28:44–48 (emphases added). The recitation as a whole requires making a specific determination for the viewing window at different points in time. Patent Owner also argues that “Petitioner’s theory would improperly render the limitation superfluous” because the claim elsewhere requires that visual content be viewable as a function of progress. Prelim. Resp. 14–15. Similarly, Patent Owner argues that the claims already require obtaining rotational positions as a function of progress. Id. at 20–21. We disagree that the limitation is superfluous. Aside from playback or obtaining rotational information, claims 1 and 11 also require that the viewing window be determined for different times within the video. In other words, if the viewing window were determined only once and this single determination were applied to every frame of an entire video, this would not meet the recitation, even if the video could be played back. slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Thomason and Pacurariu with a reasonable expectation of success. Ex. 1002 ¶¶ 76–81, 89–92; Ex. 1004 ¶¶ 4, 8, 9, 27, 29, 35; Ex. 1005 ¶¶ 26, 41, 46, 51–52, 55–57, Figs. 6–7. Pecurariu and Thomason are in the same field of endeavor, and we agree with Petitioner, on this record, that a person having ordinary skill in the art would have understood that Pecurariu’s teachings would have predictably improved Thomason. Patent Owner argues that Petitioner does not adequately establish reason to combine with rational underpinning. Prelim. Resp. 5–10. In particular, Patent Owner quotes the Petition at pages 23–24 and argues that these statements regarding reason to combine are unexplained and conclusory. Id. at 6–7. On the present record, we disagree with Patent Owner. Petitioner’s statements regarding reason to combine must be considered in view of the context provided by the entire Petition including Petitioner’s discussion of the teachings of Thomason and Pacurariu individually. See, e.g., Pet. 8–46. Similarly, the opinions of Dr. Katsaggelos regarding reason to combine (see, e.g., Ex. 1002 ¶¶ 89–92, 95, 104, 112, 115) must be considered given the complete context of Dr. Katsaggelos’s discussion of the cited art and technology. Id. ¶¶ 47–115. As explained above, Petitioner and Dr. Katsaggelos explain the references’ teachings and, based on these teachings, assert that a person having skill in the art would have had reason to combine with reasonable expectation of success based on those teachings. Reason to combine may properly come from the references themselves. KSR Int’l Co., 550 U.S. at 418 (explaining reason to combine may come from “interrelated teachings of multiple patents). On this record and based on the teachings of these references and the great similarity of the references’ technology, as we discuss above and, in more detail, below, Petitioner has a reasonable likelihood in showing that a person having skill in the art would have had reason to combine the teachings of the references with a reasonable expectation of success.” slip op. at 34
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,336,832 - PTAB · Jan 7, 2025 · IPR2024-00984 · APJ Nabeel U Khan · IPR · Institution
The Board instituted IPR on claims 1, 6, and 7 on all petitioned grounds, finding a reasonable likelihood of prevailing on the Meulen and Chao obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’413 patent. We institute inter partes review as to all the challenged claims of the ’413 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“relevant field “would have a bachelor’s degree in engineering or computer science, or equivalent field, and two years of experience working on image or video processing, or digital cameras,” or alternatively “would have four years of experience working on image or video processing, or digital cameras.” Pet. 6. Petitioner further argues that an “advanced graduate degree” may “make up for the work experience.” Id. (citing Ex. 1002 ¶¶ 33–34). At this stage of the proceeding, “Patent Owner applies Petitioner’s proposed level of skill.” Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill because it is consistent with the level of skill in the art at the time of the invention as reflected by the ’413 patent and the cited prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that no claim terms “require a formal construction” and that “Petitioner interprets the challenged claims based on the breadth of GoPro’s infringement allegations.” Pet. 6 at n2. Patent Owner asserts that several claim terms are disputed in the parallel ITC litigation, but “none of them need to be resolved by the Board.” Prelim. Resp. 4 (citing Ex. 2001 ¶ 34). We determine that, at this stage of the proceeding, no explicit constructions are required to resolve the dispute between the parties. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, Patent Owner’s Sur-reply, or otherwise during trial, as permitted by our rules.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“persuaded, at this stage of the proceeding, by Petitioner’s arguments for the reasons summarized above. Specifically, we agree that the combination of Meulen and Chao teaches non-uniform pixel shifting. Contrary to Patent Owner’s argument, we agree with Petitioner that by teaching image scaling, Meulen teaches that pixels are shifted based on a scaling factor from the input to output positions. Further, we also agree that by disclosing stretching or shrinking of its background elements Chao also teaches pixel shifting. Petitioner argues that because Meulen mentions scaling of images without providing the details of how to perform scaling, a person of ordinary 1002 ¶ 262). Based on the teachings of these references and the similarity of the references’ technology, we determine Petitioner has established a reason to combine Meulen and Chao with a reasonable expectation of success in doing so.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,015,413 - PTAB · Dec 16, 2024 · IPR2024-00973 · APJ George R Hoskins · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds, finding a reasonable likelihood that BOE would prevail on claim 4 over Reiner.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We secondly conclude Petitioner’s stipulation is commensurate in scope with a Sotera stipulation. See Sotera, Paper 12, at 13–14, 18–19; Guidance Memo, at 3. The Guidance Memo states: Consistent with Sotera Wireless, Inc., the PTAB will not 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. Guidance Memo, 3, 7–8. Thus, applying that guidance here, we do not deny institution in view of the Co-Pending Litigation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“We conclude the preliminary record supports, sufficiently to justify institution, Petitioner’s contention that a person of ordinary skill in the art would have been motivated to configure Reiner’s gate/scanning driver 63 to include the ESD protection network structure illustrated in Figure 5. First, we agree with Petitioner’s position that Reiner discloses both of its display drivers 61 and 63 would benefit from ESD protection. That is, Reiner describes display drivers 61 and 63 as “typical example[s]” of integrated circuit devices that can benefit from utilizing Reiner’s bump bridge technology for providing ESD protection, due to the large number of parallel output lines that must cross power supply lines. See Ex. 1005, 4:15–16, 9:11–20 (describing Fig. 4), 12:4–5. Thus, based on this preliminary record, we disagree with Patent Owner’s position that Petitioner mischaracterizes Reiner’s teachings in this regard. Second, based on the preliminary record, Dr. Murphy’s testimony that the ESD protection network structure of Reiner’s Figure 5 would be suitable for implementing in Reiner’s gate/scanning driver 63 due to similarities between the two drivers is supported by the evidence sufficiently to justify institution. See Ex. 1003 ¶¶ 104–105, 111–120. A first similarity is Reiner’s indication that both display drivers 61 and 63 “have areas where the output or input metal lines have to cross power supply lines” Vdd and Vss. Ex. 1005, 9:11–20, 12:4–5, Fig. 3 (illustrating exemplary integrated circuit device 30 powered by supply voltages Vdd and Vss). A second similarity is Dr. Murphy’s testimony that, at least in some embodiments of Reiner’s gate/scanning driver 63, “each of the [scan] lines being driven will have its own semiconductor units . . . [that] drive that particular line,” akin to the individual output devices 70 and source lines 67 of Figure 5. Ex. 1003 ¶¶ 113, 117; see also Prelim. Resp. 21–22 (arguing “Reiner [discloses] that the gate driver integrated circuit comprises individual gate drivers” and “a POSITA would understand that individual gate/scan line drivers are coupled to one another”). These similarities between Reiner’s display drivers 61 and 63 support Dr. Murphy’s conclusion that Reiner’s bump bridge technology for providing ESD protection could and would have been implemented in Reiner’s gate/scanning driver 63 in the same fashion as illustrated in Figure 5 for Reiner’s source/data driver module 61. We appreciate, as Dr. Schubert testifies, that the individual circuits in gate/scanning driver 63 will drive their respective gate/scan lines 68 in different ways than the individual output devices 70 in source/data driver module 61 will drive their respective source/data lines 67. See Ex. 2001 ¶¶ 55–59. Nonetheless, based on the present record, we conclude such differences in the signal outputs of Reiner’s display drivers 61 and 63 have little to do with the benefits of configuring the power inputs of the display drivers to protect the individual circuits from electrostatic discharge events, or how to do so.” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to the ’157 patent “would have had at least a Bachelor’s degree in electrical engineering, computer science, physics, or a similar field and at least two years of experience designing semiconductor display devices, including LCD displays,” and “[a]dditional relevant work experience can compensate for less education, and vice versa.” Pet. 15–16; Ex. 1003 ¶¶ 75–76. “Patent Owner does not dispute the level of skill for a person of ordinary skill in the art . . . set forth in the Petition.” Prelim. Resp. 14; Ex. 2001 ¶¶ 19–20. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as it appears to be consistent with the ’157 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,184,157 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Dec 10, 2024 · IPR2024-00983 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–6, 10, 17, 19, and 20 for all petitioned grounds, finding a reasonable likelihood of success on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner has stated that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00983 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00983 for any claim of the patent.” Ex. 1017 (citing Sotera, IPR2020-01019, Paper 12). Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any 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 explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to challenged claims 1–6, 10, 17, 19, and 20 and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of vibration-generating systems; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 27. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 3. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’882 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“We agree with the court and the parties in the Apple Litigation “that ‘control component’ is a nonce phrase tantamount to using the word ‘means.’” Ex. 2002, 19 (citing Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022)). We also agree that the ’882 specification links the stated function of the control component requirement with the direct sensing of position and velocity algorithm depicted in Figure 45, discussed above in Section II.C. Ex. 1013, 17; Ex. 2001, 10; Ex. 2002, 40.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 11,152,882 - Ascend Elements, Inc. v. Duesenfeld GmbHInstitutedPTAB · Nov 22, 2024 · IPR2024-00948 · APJ Kevin W Cherry · IPR · Institution
Instituted IPR on claims 1–3, 7–10, 12, 13, and 19 on all asserted grounds; Petitioner showed a reasonable likelihood of prevailing on the Hanisch-Dunagan combinations with added references.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“d) Conclusion Regarding Claim 1 Based on the current record, we determine that Petitioner has shown a reasonable likelihood that it will prevail in demonstrating that claim 1 is unpatentable as obvious over Hanisch in view of Dunagan and Hayashi, Meador, or Shin. 5. Claims 2, 3, and 7–10 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’097 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 26
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Petitioner contends that one of ordinary skill in the art “would have had at least a master’s degree in chemical engineering, mechanical engineering, materials science/engineering, or a related field, and three to five years of experience in design and implementation of battery recycling processes.” Pet. 15–16. Patent Owner argues to the contrary that a person of ordinary skill in the art “would have [had] at least a Bachelor’s degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry experience in the recycling or processing of lithium-ion batteries.” Prelim. Resp. 13. On the present record, neither party argues that the result would be any different should we adopt a different definition of a person of ordinary skill in the art. For purposes of this Decision, we adopt Patent Owner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner argues that “[t]he ’097 Patent expressly defines ‘drying’ to mean ‘the removal of at least one solvent in the conducting salt.’” Pet. 16 (quoting Ex. 1001, 2:23–25). Petitioner also argues that “[a]ll other terms should be given their plain and ordinary meaning under Philips and do not need further construction for the purposes of this Petition.” Id. Patent Owner argues that “[n]o claim terms require express construction to determine that the Petition does not establish a reasonable likelihood of unpatentability of any claim and, thus, deny institution.” Prelim. Resp. 13. Based on the present record, we need not expressly construe any claim terms at this time.6 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 › Discretionary denial › General Plastic (serial petitions)Denied
“On the present record, we do not find the relationship between URT and Petitioner to be significant to the degree that raises concerns under Valve and General Plastic. In Valve, two factors affected the determination that there was a significant relationship between the two petitioners at issue: “Valve and HTC were co-defendants in the District Court litigation,” and “the petitions . . . challenge[d] the same claims of the [challenged] patent.” IPR2019-00062, Paper 11, 10. Here, one of these factors is absent, and the other is not entirely present. URT and Petitioner are not co-defendants in the related infringement lawsuit, which accuses only Petitioner. Ex. 2014, 1. As for the claims challenged in the two petitions, Patent Owner is correct that all claims challenged in the present proceeding are also challenged in IPR2024-00887, but the reverse is not true. The petition in IPR2024-00887 challenges claims 15–17 of the ’097 patent, none of which is challenged here. Compare Pet. 3, with IPR2024-00887, Paper 2, 4–5. Thus, there is a significant difference between the present situation and that in Valve.” slip op. at 31
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Nov 20, 2024 · IPR2024-00887 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–3, 7–10, 12, 13, and 15–19 on all asserted grounds, finding a reasonable likelihood that claim 12 is anticipated by LithoRec.
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 1 In the Introduction and section headings of the Petition, Petitioner identifies claims 1–3, 7–9, 12, 13, and 15–19 as the challenged claims. Pet. i–ii. In the substantive content of the Petition, however, Petitioner includes claim 10 as a challenged claim as well. Id. at 34–35. 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a B.S. degree in electrical engineering, materials science, chemical engineering, or an equivalent field, as well as at least 2 to 3 years of academic or industry [experience] in the recycling or processing of lithiumion batteries.” Pet. 14. On the present record, Patent Owner does not contest Petitioner’s proposed definition of a person of ordinary skill in the art. Prelim. Resp. 19. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’097 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that “[n]o claim construction is needed,” because “[t]he claims are unpatentable under any reasonable interpretation.” Pet. 15. That said, Petitioner directs us to alleged definitions of several terms in the specification or prosecution history of the ’097 patent. Id. at 15–17. Patent Owner argues that “[c]laim construction is not required to deny the Petition.” Prelim. Resp. 26. Based on the present record, we agree with both parties that we need not expressly construe any claim terms at this time.6 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
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“In order to anticipate a claimed invention, a prior art reference must enable one of ordinary skill in the art to make the invention without undue experimentation.” Impax Labs., Inc. v. Aventis Pharms., Inc., 545 F.3d 1312, 1314 (Fed. Cir. 2008). In addition, “[a]n anticipatory reference need only enable subject matter that falls within the scope of the claims at issue, nothing more.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1381 (Fed. Cir. 2003). slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,050,097 - PTAB · Nov 1, 2024 · IPR2024-01010 · APJ Brian D Range · IPR · Institution
The Board instituted inter partes review of claims 1–6 and 8 on all petition grounds and granted Texas Instruments’ motion to join the NXP IPR as an understudy petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Thus, for the same reasons set forth in our institution decision in the NXP IPR, we determine that the information presented in the Petition shows a reasonable likelihood that Petitioner would prevail in showing that claims 1–6 and 8 are unpatentable. See NXP Dec. Accordingly, we institute an inter partes review of the same claims on the same grounds as the ones on which we instituted review in the NXP IPR. 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Petitioner agrees that, if joinder is granted, it will have an “understudy role.” Id. at 2–3, 6–8. Petitioner agrees to various restrictions as an understudy. Id. Along these lines, Petitioner will abide by the following conditions so long as NXP is actively participating in this proceeding: (a) TI shall not make any substantive filing and shall be bound by the filings of Petitioner NXP, unless a filing concerns termination and settlement, or issues solely involving TI; (b) TI shall not present any argument or make any presentation at oral argument unless an issue solely involves TI, or when addressing Board-approved motions that do not affect Petitioner NXP or its respective position; (c) TI shall not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving TI; (d) TI shall not seek discovery from Patent Owner on issues not solely involving TI; (e) TI will not rely on expert testimony beyond that submitted by Petitioner NXP unless Petitioner NXP is terminated from the case. If Petitioner NXP is not terminated from the case, TI agrees to rely entirely on, and be bound by, the expert declarations and depositions in the NXP IPR. Mot. 6–7. In sum, TI “will not assume an active role unless Petitioner NXP ceases to participate in the proceeding.” Mot. 2.13 The conditions above mean that joinder will have no impact on the NXP IPR trial schedule and will not complicate the NXP IPR briefing or discovery. These understudy provisions are consistent with the provisions imposed by, for example, Ecobee Techs. ULC v. EcoFactor, Inc., IPR 2022-01460, IPR2022-00473, Paper 7 (PTAB Jan. 24, 2023) and Apple Inc. v. INVT SPE LLC, IPR2019-00959, Paper 8 (PTAB May 30, 2019).” slip op. at 6
NonePatents in suitUS 7,345,245 - PTAB · Oct 23, 2024 · IPR2024-00679 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted review of claims 28, 38, 39, 41–43, 53, 56–59, 61–63, and 65–68 on all asserted grounds after finding a reasonable likelihood that claim 28 was obvious over Krantz and Herrmann.
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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that one of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or an equivalent, and two years of relevant experience in networking and network security, and related fields.” Pet. 4. Petitioner also asserts that “[l]ack of professional experience can be remedied by additional education, and vice versa.” Id. Patent Owner argues that a person of ordinary skill in the art “would have had a bachelor’s degree in computer science, computer engineering, or electrical engineering and at least three years of experience in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“Based on the present record, we agree with Patent Owner that the recited “reconfiguring the communication port” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfiguring the communication port” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the present record, we find Petitioner’s rationale sufficient for institution. Petitioner points to Krantz’s alleged goals of security and automation. Pet. 19. Petitioner (id.) and Dr. Houh (Ex. 1503 ¶ 64) both cite paragraph 19 of Krantz, which states that “[i]f credentials do not authorize full access . . . the server can respond by sending a notification . . . includ[ing] conditions (e.g., signup, renewal etc.) a user must satisfy to become authorized for []full access to resources.” Ex. 1505 ¶ 19. We are persuaded preliminarily that an ordinarily skilled artisan considering Krantz’s teachings of such conditions for full access would have had reason to apply Herrmann’s technique for checking a client’s antivirus security policy in the manner suggested by Petitioner. See, e.g., Ex. 1503 ¶ 64; Ex. 1506 ¶ 68. Krantz’s express teaching of conditions for a client to fully access a network (Ex. 1505 ¶ 19) also undermines Patent Owner’s argument about impermissible hindsight and Patent Owner’s suggestion that Krantz is limited to user authentication. Finally, we are persuaded that Petitioner has shown sufficiently, for purposes of instituting review, that an ordinarily skilled artisan would have expected success in making the combination because it would only require software modifications to Krantz’s system. See, e.g., Ex. 1503 ¶ 64.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484 - PTAB · Oct 23, 2024 · IPR2024-00675 · APJ Christopher M Kaiser · IPR · Institution
The Board instituted IPR on claims 1–6, 11–13, 15–19, and 23–25 on all asserted grounds, finding a reasonable likelihood of success at least on obviousness over Krantz and Herrmann.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“e) 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 Krantz and Herrmann. Accordingly, we institute inter partes review with respect to all grounds asserted in the Petition. 5. Claims 2–6, 11–13, 15–19, and 23–25 Because Petitioner demonstrates a reasonable likelihood of success in proving that at least one claim of the ’484 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 22
- Parallel petitionsDecided for petitioner
“III. PARALLEL PETITIONS As noted above, Petitioner challenges the ’484 patent both in this proceeding and in IPR2024-00679. Petitioner argues that we should institute review in both proceedings because “the analysis of all 33 challenged claims . . . of the 484 Patent could not reasonably fit within the word limit for a single petition.” Paper 4, 2. Petitioner notes further that “addressing different sets of independent claims in each petition was most efficient given the differences between independent claim 1 (Petition 1 - IPR2024-00675) and independent claims 28, 41, 56, and 57 (Petition 2 - IPR2024-00679).” Id. Patent Owner does not argue that we should deny institution either in this proceeding or in IPR2024-00679 due to Petitioner’s having filed parallel petitions challenging the ’484 patent. Prelim. Resp. 1–44. Given Patent Owner’s acquiescence and Petitioner’s arguments, we do not exercise our discretion to deny institution due to the parallel petitions.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“in networking operating systems and cybersecurity.” Prelim. Resp. 1. Alternatively, Patent Owner argues that a person of ordinary skill in the art would have had “a master’s degree in one of the foregoing and at least two years of experience in the aforementioned fields.” Id. On the present record, neither party explains why the outcome of this case would be affected by the adoption of any of the proffered definitions of a person of ordinary skill in the art. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art, as, on the present record, it appears consistent with the ’484 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Based on the present record, we agree with Patent Owner that the recited “reconfigur[ing] the communication device” at least encompasses changing the association between the input port and output port of the access point. This is supported by the specification of the ’484 patent, which states: “Access Control 320 is configured to send commands to Switch Logic 317 in order to reconfigure members of Ports 305A-305G. This reconfiguration includes modifying the association of members of Ports 305A-305G with different members of VLANs 310A-310D.” Ex. 1501, 9:21–25; see also id. at 8:16–21 (similar disclosure with respect to “configuring and reconfiguring”). Notwithstanding, based on the present record, we do not agree with Patent Owner that “reconfigur[ing] the communication device” is limited to changing the connection between the input port and the output port of the access point. Instead, the ’484 patent makes clear that reconfiguration is merely “typically,” not necessarily, of this type. Ex. 1501, 3:20–25. For this reason, we need not and do not adopt Patent Owner’s proposed construction at this juncture. Based on the present record, we need not expressly construe any other claim terms.3 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 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,523,484
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.