- Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
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, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Aug 13, 2024 · IPR2024-00573 · APJ Thu A Dang · IPR · Institution
The Board instituted inter partes review of claims 1, 5, 6, 8–11, 13, and 14 on all three §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“does not suggest a requirement that information be received from a PDK in exchange for an access key. Nothing in the Specification clearly limits the integrated, secure memory “enabl[ing] one or more of an application a function, and a service” to “receiv[ing] information from a PDK in exchange for an access key,” as Patent Owner proposes. Prelim. Resp. 21–28. Thus, we determine that “enabl[ing] one or more of an application a function, and a service” does not require receiving information from a PDK in exchange for an access key. Id. We are unpersuaded by Patent Owner’s contention that the Specification implicitly defines “enabl[ing] one or more of an application a function, and a service” as requiring receiving information from a PDK in exchange for an access key. Prelim. Resp. 21–28. As Patent Owner argues, “the specification may define claim terms by implication such that the meaning may be found in or ascertained by a reading of the patent documents.” Id. at 20 (citing Trustees of Columbia Univ. v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016) (emphasis added)). However, Patent Owner points to no portions in the Specification that provide the requisite “reasonable clarity, deliberateness, and precision” to warrant interpreting the claim language at issue as requiring “receiving information from a PDK in exchange for an access key.” Id. at 21–28; In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1984).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“We find Patent Owner’s arguments unavailing. In particular, Patent Owner is relying on a claim construction of “enabling,” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 29–31) that is not consistent with our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to, and does not require, “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, an RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein upon its completion “‘enabl[es] access to secure physical or digital assets’ (‘enabling one or more of an application, a function, and service’).” See Pet. 37. On this preliminary record, we are persuaded that Petitioner has made a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of the integrated RDC and integrated RDC and integrated PDK enabling one or more of an application, a function, and a service on one or more of the hybrid device and a device associated with the external RDC,” as recited in claim 1.” slip op. at 28
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,646,042 - PTAB · Aug 9, 2024 · IPR2024-00509 · APJ Michael J Strauss · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–19, finding a reasonable likelihood of success on the asserted §103 obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Upon consideration of the Petition and the evidence of record, we determine that Petitioner has established a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’842 patent. Accordingly, for the reasons that follow, we institute an inter partes review of claims 1–4 and 6–19 of the ’842 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citation omitted). The level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). We adopt the assessment offered by Petitioner for the purposes of this Decision because it is consistent with the ’842 patent and the asserted prior art.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“We determine that we need not expressly construe any claim terms to resolve the parties’ disputes on the current record. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“in the prior art that would have led a POSITA to modify the teachings of the Lorex Guide to incorporate the teachings of Kim, Petitioner argues, with Dr. Bim providing supporting testimony, that “both [the] Lorex Guide and Kim are directed to connecting network endpoint devices (e.g., peer devices) including smart phones and cameras” and “a POSITA would have been sufficiently skilled to implement such a combination given the predictable electrical/network components and the relatively advanced state of the art at the time.” Id. (citing Ex. 1001 ¶ 70). Thus, according to Petitioner, “a POSITA would have had a reasonable expectation of success in achieving the Lorex Guide-Kim combination.” Id. at 19 (citing Ex. 1001 ¶¶ 70–71). At this stage of the proceeding, we credit Dr. Bim’s testimony that a skilled artisan would have had reasons to combine the teachings of the Lorex Guide and Kim. Thus, on the preliminary record before us and in the absence of any counterargument from Patent Owner, we are persuaded for purposes of this Decision that Petitioner makes a sufficient showing that a skilled artisan would have had reasons, with rational underpinning, to combine the teachings of the Lorex Guide and Kim, with a reasonable expectation of success.” slip op. at 21
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · Graham - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00232 · APJ David C Mckone · IPR · Institution
Instituted IPR of claims 1–6 and 8–17 based on reasonable likelihood that Google would prevail on the asserted obviousness grounds over Ludtke, alone or with Kon.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2020). 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 explained below, we institute an inter partes review of the ’730 patent.” slip op. at 2
- Prior constructionPrior construction adoptedDecided for patent owner
“third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 7:10–22, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’730 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 5:42–56, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 6:35–38) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 6:32–64, Fig. 5 (describing activities of an agent). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,352,730 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 24, 2024 · IPR2024-00233 · APJ David C Mckone · IPR · Institution
The Board instituted IPR on claims 1–7, 10, 12–19, and 22–27 based on a reasonable likelihood of prevailing on obviousness grounds over Ludtke or Ludtke and Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for patent owner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority,” or “third party that operates a trusted authority,” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’954 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:5–17, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, those parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’954 patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:37–51, Figs. 3–4. However, despite the trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:30–33) refers to an agent’s relationship to the principal parties to the transaction, not to the level of activity the agent engages in. See id. at 7:27–59, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, are presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third party that operates a trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third party that operates a trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“1. Level of skill in the art Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4 (citing Ex. 1003 ¶¶ 31–32, 53–55). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. Petitioner’s proposal is consistent with the technology described in the Specification and the cited prior art. For purposes of this Decision, we adopt Petitioner’s proposed level of skill.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 63–67 (citing Ex. 1006 ¶¶ 194, 234, 241, 265–266, Figs. 5, 9; Ex. 1003 ¶¶ 184–185). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 68 (citing Ex. 1003 ¶¶ 186–187). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claims 10 and 13. Pet. 69 (citing Ex. 1003 ¶ 188). Patent Owner does not yet provide separate arguments for claims 3, 14, and 17. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 3, 14, and 17, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 25
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,886,954 - Google LLC v. Proxense, LLCInstitutedPTAB · Jul 23, 2024 · IPR2024-00234 · APJ Kevin F Turner · IPR · Institution
The Board instituted IPR on claims 1–7 and 9–18 based on the asserted obviousness grounds over Ludtke and Ludtke with Kon.
RulingsInstitution decision- Prior constructionPrior construction adoptedDecided for petitioner
“The Samsung DDI does not provide a basis for further limiting a “third-party trusted authority” to exclude any active participant in a transaction. This would exclude the trusted key authority of the preferred embodiments of the ’730 patent, which actively participates in a transaction, for example by receiving a request for authentication with a code, determining whether the code is valid, authenticating the code, and transmitting an access code to the requester, which allows a user access to an application. Ex. 1001, 8:8–20, Fig. 7. Although the trusted key authority in this example is not a principal party to the transaction (here, the parties are the user and the application), it is an active participant in facilitating the transaction. In another preferred embodiment of the ’905 Patent, trusted key authority 320 plays an active role in transactions, e.g., verifying to a grocery store that a biometric key presented by a customer is legitimate, thereby allowing the transaction to proceed. Id. at 6:39–53, Figs. 3–4. However, despite trusted key authority’s active participation, the parties to such a transaction are the customer and the grocery store, not trusted key authority 320. The “witness” role mentioned in the Specification (Ex. 1001, 7:33–36) refers to an agent’s relationship to the principal parties to the transaction, not to level of activity the agent engages in. See id. at 7:30–642, Fig. 5 (describing activities of an agent). Patent Owner’s proposed clarifications, or modifications, to the Samsung DDI’s construction of “third-party trusted authority,” which would exclude these embodiments, is presumptively incorrect. See Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317, 1327 (Fed. Cir. 2023) (“The Federal Circuit “recognize[s] that ‘[a] claim construction exclud[ing] a preferred embodiment is rarely, if ever correct.’” (quoting Kaufman v. Microsoft Corp., 34 F.4th 1360, 1372 (Fed. Cir. 2022) (second and third alterations in original)). Indeed, Patent Owner’s view would transform any entity that is accessed for any reason in a transaction into a party to that transaction, thus excluding it from the scope of a “third-party trusted authority.” Patent Owner, however, has advanced no persuasive support for such a narrow reading of the claims. Accordingly, we adopt the Samsung DDI’s construction without Patent Owner’s modifications. On the current record, a “third-party trusted authority” is “a trusted authority that is an entity separate from the parties to a transaction.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Remaining claim terms Based on the preliminary record, we do not find it necessary to provide express claim constructions for any other terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had at least a bachelor’s degree in Computer or Electrical Engineering or an equivalent engineering discipline, and at least three years of experience in the field of encryption and security, or the equivalent,” and that “[a]dditional education could substitute for professional experience, and significant work experience could substitute for formal education.” Pet. 4–5 (citing Ex. 1003 ¶¶ 31–32, 54–56). Patent Owner does not challenge Petitioner’s proposed level of skill or propose an alternative. See Prelim. Resp. Based on the record presented, including our review of the ’905 Patent and the types of problems and solutions described in the ’905 Patent and cited prior art, we adopt Petitioner’s definition of the level of ordinary skill in the art and apply it for purposes of this Decision.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner contends that Kon describes registering and storing a user’s age in association with a user device’s device ID. Pet. 43–46 (citing Ex. 1006 ¶¶ 194, 234, 241, 264–265, Figs. 5, 9; Ex. 1003 ¶¶ 66–70). Petitioner argues that “[t]he user’s age, like the biometric information, provides another data point for identifying the user,” and would have been especially useful when a transaction has an age minimum, such as purchasing alcohol or cigarettes. Id. at 50 (citing Ex. 1003 ¶¶ 152–153). Accordingly, Petitioner argues, a skilled artisan would have registered a user’s age, as taught by Kon, with Ludtke’s device ID to facilitate age-prohibitive transactions. Id. Petitioner makes the same arguments for claim 11. Id. at 51 (citing Ex. 1003 ¶ 155). Patent Owner does not yet provide separate arguments for claims 2 and 11. See Prelim. Resp. On the current record, Petitioner has shown sufficiently that Kon teaches the additional limitations of claims 2 and 11, and that a skilled artisan would have had reasons, with rational underpinning, for combining Ludtke and Kon.” slip op. at 26
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,298,905 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00407 · APJ Thu A Dang · IPR · Institution
Instituted IPR on claims 1–20 of the ’289 patent over four § 103 grounds: Giobbi ’157/Giobbi ’139; with Dua; Broadcom; and Broadcom with Giobbi ’157.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- BurdenOther
“We find Patent Owner’s arguments unavailing. In particular Patent Owner is relying on a claim construction of “enabling” requiring “providing an access key in exchange for information held locally in the PDK’s service blocks” (Prelim. Resp. 32–35) that is not required by our construction discussed above. As discussed above, we determine that the term “enabl[ing] an application, a function or a service” is not limited to “receiv[ing] information from a PDK in exchange for an access key.” Giobbi ’157 teaches, for example, a RDC requesting profile data stored within the external PDK for authentication, wherein, if the profile data received from the external PDK is valid, the RDC completes the transaction, which includes enabling access to secure physical or digital assets. See Ex. 1005 ¶¶ 61, 63, Fig. 4. We are persuaded by Petitioner’s reliance on Giobbi ’157’s “transaction” wherein its completion “enabl[es] access to secure physical or digital assets,” i.e., “enables one or more of an application, a function, and service.” See Pet. 35. a sufficient showing that the combination of Giobbi ’157 in view of Giobbi ’139 and Dua teaches “one or more of (a) the integrated, wireless communication interface . . . and (b) the local, secured information stored by the integrated, secure memory enables one or more of an application, a function, and a service,” as recited in claim 1.” slip op. at 33
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 27−29. Further, nothing in the Specification clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 27. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 28. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition],” and not a definition. See Ex. 1001, 3:43–50. The language Patent Owner points to in the Specification proves that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Prelim. Resp. 28 (citing Ex. 1001, 3:43–50) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a “service block” can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed 6 We are unpersuaded by Patent Owner’s contention that “the permissive language ‘in this example’ does not expand the definition ‘local secure information’” because “it applies to the sensors.” Prelim. Resp. 28. The Specification is clear that, in this example, “the” same service access keys 118 contained by the sensor allow the sensor to unlock information “used as local secured information.” See Ex. 1001, 3:43–50. wherein the information is secured,,and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In view of the plain language of the claims and the Specification, we determine that the term “hybrid device” recited in claims 1–16, and 19 is not limited to “comprising an integrated personal digital key (PDK).” We determine no further explicit construction is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803. 2. “receiver-decoder circuit (RDC)” Patent Owner proposes construing “receiver-decoder circuit” appearing in claims 1, 3, 7, 14, and 16 as “a component or collection of components, capable of wirelessly receiving data in an encrypted format and decoding the encrypted data for processing” as “construed” by the district court in the Samsung case. Prelim. Resp. 7–8 (citing Ex. 2001, 4; Ex. 2004, 4). Petitioner contends that, “[f]or purposes of this proceeding, Petitioner adopts this construction [adopted in the district court].” Pet. 5. We determine no explicit construction of “receiver-decoder circuit” is necessary to resolve the parties’ issues in controversy. See Vivid Techs., 200 F.3d at 803.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,679,289 - Microsoft Corporation v. Proxense, LLCInstitutedPTAB · Jul 22, 2024 · IPR2024-00405 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that at least one challenged claim would be unpatentable under the asserted § 103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“whether to institute an inter partes review. Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant Petitioner’s request and institute an inter partes review of all challenged claims.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“The plain meaning of “an integrated, secure memory storing local, secured information,” as claimed, suggests an integrated, secure memory for storing information locally, wherein the information is secured. See Pet. 28– 29, 67–68; Prelim. Resp. 22−23. Further, nothing in the Specification or the clearly limits or redefines “local, secured information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner proposes. Prelim. Resp. 22. We are unpersuaded by Patent Owner’s contention that the Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageDisclaimer not foundDecided for petitioner
“Specification “clearly defines ‘which information is used as local secured information.’” Prelim. Resp. 22. Although Patent Owner points to an “instance” in the Specification that it alleges is such a “clear[] defin[ition]” (id.), this portion of the Specification merely shows an exemplary embodiment and not a definition. The language Patent Owner points to in the Specification provides that “[i]n this example, the sensor 108 contains three of the service block access keys 118A, D, F,” wherein “[t]he service block access keys 118 allow the sensor 108 to unlock information stored in the corresponding service blocks 112, which information is used as local secured information.” Id. (citing Ex. 1001, 3:50–57) (emphasis added). That is, although the referenced portion of the Specification indicates that, in an example, information stored in a corresponding service block can be used as “local secure information,” nothing in the Specification limits “local, secure information” to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK,” as Patent Owner contends.6 Id. Any special definition for “local, secured information” limiting it to “information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK” must be set forth in the Specification with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). We do not discern such clarity, deliberateness, and precision to be present here. In view of the plain language of the claims and the Specification, we determine that the term “local, secured information” as claimed encompasses information stored locally on an integrated, secure memory, wherein the information is secured, and is not limited to information stored within a service block of a PDK and unlocked with a corresponding access key provided to the PDK.” slip op. at 9
- Prior constructionPrior construction not adoptedDecided for petitioner
“We are unpersuaded by Patent Owner’s contention that “the District Court found it necessary to construe the term ‘enabled.’” Prelim. Resp. 4–5. In particular, we disagree that the district court in the Samsung case provided any construction for the term “enabled.” Id. Although Patent Owner points to the district court’s Memorandum in Support of Claim Construction Order (Id. (citing Ex. 2002, 26)) to support its contention that the district court construed the term “enabled,” this portion of the district court’s Memorandum merely discusses that “hybrid device” is not indefinite, and discusses exemplary operations of the “hybrid device” from which a POSITA “could reasonably ascertain the scope of the claim.” See Ex. 2002, 26. That is, a determination of whether a term is indefinite is not the same things as construing a claim term. Thus, the district court’s determination that “hybrid device” is not indefinite did not construe that term, much less provide a construction of “enabled” recited in the claim. Accordingly, although the referenced portion of the district court’s Memorandum indicates that a POSITA could reasonably ascertain the scope of the claim (id.), nothing in the Memorandum provides a definition of “enabled” limited to “exchanging an access key for information held within a service block of a PDK,” as Patent Owner contends. Prelim. Resp. 19.” slip op. at 11
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,073,960 - Nespresso USA, Inc. v. K-Fee System GmbHInstitutedPTAB · Jun 25, 2024 · IPR2024-00299 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1–8 based on a reasonable likelihood that claim 1 is obvious over Yoakim, Jarisch ’929, Rossi, and Rapparini.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 35 U.S.C. § 314 (2018); see also 37 C.F.R. § 42.4(a) (2023) (permitting the Board to institute trial on behalf of the Director). 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 [one] of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, upon considering the Petition, Preliminary Response, and evidence of record, we institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner contends that a person of ordinary skill in the art would have had “a bachelor’s degree in engineering plus five years of experience in design of mechanical beverage systems, or similar products, and experience with sensors for recognizing an identifier.” Pet. 16 (referencing Ex. 1003 ¶ 40; IPR2022-01574, Paper 12, 15). Patent Owner does not dispute Petitioner’s characterization of the level of ordinary skill in the art of the ’910 patent. For purposes of this Decision, based on the prior art, the sophistication of the technology at issue, and Mr. Jobin’s Declaration testimony, we adopt Petitioner’s unopposed definition of the level of ordinary skill. The ’901 patent, as well as the prior art of record, includes systems that use identifiers on a capsule to control the operation of a beverage machine. See, e.g., Ex. 1001, 1:28–34 (“[T]he present invention . . . has an identifier, which allows to individualize the respective portion capsule.”); Ex. 1004 ¶ 25 (discussing the system’s “identification means”); Ex. 1006 ¶ 1 (“The present invention relates in particular to coding supports adapted to store information related to a capsule, capsules associated with/for embedding coding supports, reading and processing arrangements for reading and using such information for preparing a beverage.”); Ex. 1041, code (57) (“The process for controlling the operation of an edible-product making machine [includes] . . . recogni[zing] an” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“that would be used to construe the claim in a civil action under 35 U.S.C. [§] 282(b).” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc) (“We have frequently stated that the words of a claim ‘are generally given their ordinary and customary meaning.’” (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).” slip op. at 18
- Obviousness (§103) › Analogous artAnalogous artOther
“a) Petitioner’s contentions Petitioner contends that Yoakim, Jarisch ’929, Rossi, and Rapparini are “analogous art in the field of portion capsule beverage extraction, each disclosing an invention that may be applied in automatic coffee/expresso machines.” Pet. 37 (referencing Ex. 1004 ¶¶ 2, 3; Ex. 1006 ¶¶ 1, 2; Ex. 1008 ¶ 1; Ex. 1041, 3; Ex. 1003 ¶ 220); cf. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) (“References within the statutory terms of 35 U.S.C. § 102 qualify as prior art for an obviousness determination only when analogous to the claimed invention.”). Patent Owner does not dispute this contention at this stage of the proceeding.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,554,910 - PTAB · May 10, 2024 · IPR2024-00200 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–16 on all asserted grounds, finding a reasonable likelihood of prevailing based on the Hays obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“chapter 30, or chapter 31, the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” We use the following two-part framework in determining whether to exercise our discretion under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” slip op. at 5
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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 the information presented in the Petition and the Preliminary Response shows “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 institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had an undergraduate degree in game design or development, computer science, computer engineering, or a related field, with at least two years of experience working with computer gaming systems or software application development.” Pet. 2 (citing Ex. 1003 ¶¶ 65–69). Petitioner also contends that “[l]ess work experience may be compensated by a higher level of education or vice versa.” Pet. 2–3 (citing Ex. 1003 ¶¶ 65–69). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’056 patent and the asserted prior art, except that we change qualifier “at least” to “about” to avoid including experience levels that exceed the level of ordinary skill in the art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“D. Claim Construction Neither party proposes any claim terms for construction. On this record, we determine that no terms need express construction to determine whether we should institute. 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” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,117,056
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.