- Sonos, Inc. v. Google LLCInstitutedPTAB · May 19, 2023 · IPR2023-00119 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–7, 9–15, 17, and 18 on all asserted grounds, finding a reasonable likelihood of unpatentability based on Rosenberger alone or with Basye.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“whether Petitioner has sufficiently shown that the Office erred in a manner material to the patentability of the challenged claims. Examples of such errors may include misapprehending or overlooking specific material teachings of the relevant prior art or misapplying the law in a material way. See Advanced Bionics, Paper 6 at 8–9 n.9. For this analysis, Becton, Dickinson Factors (c), (e), and (f) are particularly relevant. See id. at 10.” slip op. at 22
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“detailed, comprehensive, and substantive analysis. See Pet. 22–49. We have reviewed Petitioner’s evidence and arguments, and for purposes of this Decision, based on the evidence and arguments before us, we determine for the reasons stated in the Petition (id.) that the evidence establishes a reasonable likelihood that Petitioner will prevail in establishing that independent claims 1, 9, and 17 are unpatentable. a) Conclusion for Claims 1, 9, and 17 Based on the arguments and evidence in the record before us, we determine, for purposes of this Decision, Petitioner has established a reasonable likelihood that independent claims 1, 9, and 17 are anticipated by Rosenberger.” slip op. at 33
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“II. ANALYSIS A. Legal Standards “To anticipate a claim, a prior art reference must disclose each and every element of the claim, either explicitly or inherently.” Adasa Inc. v. Avery Dennison Corp., 55 F.4th 900, 910 (Fed. Cir. 2022) (citing Eli Lilly & 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011), took effect on September 16, 2011. The changes to 35 U.S.C. §§ 102 and 103 in the AIA do not apply to any patent application filed before March 16, 2013. Because the application for the patent at issue in this proceeding claims priority to applications filed after March 16, 2013, we refer to the AIA version of the statute. 3 U.S. Patent No. 8,340,975 B1, Dec. 25, 2012, Ex. 1003 (“Rosenberger”). 4 U.S. Patent Application Publ. No. 2014/01636978 A1, June 12, 2014, Ex. 1013 (“Basye”). 5 Dr. Johnson earned undergraduate degrees in Computer Science Engineering and in Electrical Engineering, a Master’s degree in Electrical Engineering, and a Ph.D. degree “with a doctoral dissertation focused on speech processing and automatic speech recognition.” Ex. 1002 ¶ 6. He currently is “the Department Chair and a Full Professor in the Department of Electrical and Computer Engineering at the University of Kentucky.” Id. ¶ 5. His extensive experience in academia and research is summarized in his testimony. See id. ¶¶ 5–11; see also id., App. A (Dr. Johnson’s CV). Co. v. Zenith Goldline Pharms., Inc., 471 F.3d 1369, 1375 (Fed. Cir. 2006). “While those elements must be arranged or combined in the same way as in the claim, the reference need not disclose the elements in the very same terms used by the patent.” Id. (citing In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (“[T]he reference need not satisfy an ipsissimis verbis test.” (citing In re Bond, 910 F.2d 831, 832–33 (Fed. Cir. 1990))). “The question of what a reference teaches and whether it describes every element of a claim is a question for the finder of fact.” Id. (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1221 (Fed. Cir. 2003)). As further explained in Net MoneyIN, unless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). Id.; see also Verdegaal Bros. v. Union Oil Co., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). “The identical invention must be shown in as complete detail as is contained in the . . . claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“or limitation in dependent claims 4, 6, 12, and 14 is disclosed in Rosenberger or Basye. Pet. 61–69. Petitioner also provides reasons why a person of ordinary skill would use the energy management technology of Basye in the Rosenberger device. Petitioner asserts a person of ordinary skill “would have been motivated to modify Rosenberger to incorporate Basye’s teachings such that the ‘control device’ of Rosenberger would transmit its WS [weighted signal] message based on determining that its hotword score satisfies a threshold.” Id. at 69–70 (citing Ex.1002 ¶¶ 212-16). Petitioner also asserts a person of ordinary skill “would have been motivated to modify Rosenberger’s ‘control device’ to utilize a threshold determination as a basis to transmit its WS messages over the network to help reduce ‘false positive’ detections of a ‘trigger phrase’ (or ‘wakeword’).” Pet. 70 (citing Ex.1002, ¶214). The reason why a skilled person would have made this modification, according to Petitioner, is that “Basye explains that the use of ‘thresholding’ can help reduce false positives, which is a situation where a computing device incorrectly determines that speech is present or that speech includes a wakeword. Pet. 70 (citing Ex.1013 ¶¶ 51, 74–75). Moreover, Petitioner also asserts that, as Basye explains, this “helps to conserve power and/or processing resources.” Id. (citing Ex.1002 ¶ 215; Ex.1013 ¶¶ 9–10, 38, 44).” slip op. at 37
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,593,330 - Sonos, Inc. v. Google LLCInstitutedPTAB · May 19, 2023 · IPR2023-00118 · APJ Barry L Grossman · IPR · Institution
The Board instituted IPR on claims 1–5, 7–13, and 15–20, finding a reasonable likelihood of anticipation by Rosenberger and obviousness over Rosenberger and Basye.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“detailed, comprehensive, and substantive analysis. See Pet. 22–50. We have reviewed Petitioner’s evidence and arguments, and for purposes of this Decision, based on the evidence and arguments before us, we determine for the reasons stated in the Petition (See Pet. 22–50) that the evidence establishes a reasonable likelihood that Petitioner will prevail in establishing that independent claims 1, 9, and 16 are unpatentable. a) Conclusion for Claims 1, 9, and 16 Based on the arguments and evidence in the record before us, we determine, for purposes of this Decision, Petitioner has established a reasonable likelihood that independent claims 1, 9, and 16 are anticipated by Rosenberger.” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Based on the evidence of record, we determine for purposes of this Decision, that (1) the lack of any substantive analysis or discussion of Rosenberger in the examination of the application that matured into the ’398 patent, (2) the prominent role of Rosenberger in this large family of related patents, (3) the double patenting rejection establishing a close relationship between the claims of the ’398 patent and claims that were rejected based on Rosenberger in the ’752 patent, (4) the failure to provide a “suitable” (see MPEP § 1302.14. IV(D), substantive reason why the claims were allowed, and (5) our determination that there is a reasonable likelihood that Rosenberger anticipates several claims in the ’398 patent collectively support Petitioner’s assertion that the Examiner overlooked specific material disclosures in Rosenberger. See Advanced Bionics, Paper 6 at 8–9 n.9 (“An example of a material error may include . . . overlooking specific teachings of the relevant prior art where those teachings impact patentability of the challenged claims.”).” slip op. at 28
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art would have had “the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2-4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 ¶¶ 60–63). Dr. Johnson’s Declaration testimony states he considered some of the factors listed above. Ex. 1002 ¶ 61. Dr. Johnson “also considered [his] own experiences working and teaching in the fields of voice and audio processing.” Id. Dr. Johnson testifies that, in his opinion, the level of ordinary skill is as stated by Petitioner. Id. at 62. Patent Owner does not assert a level of ordinary skill, nor does Patent Owner dispute Petitioner’s definition of the level of ordinary skill. See, Prelim. Resp., generally. For purposes of this Decision, based on the prior art, the sophistication of the disclosed technology in the ’398 patent, and Dr. Johnson’s undisputed testimony, we adopt Petitioner’s definition of the level of ordinary skill.8” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states, “the Challenged Claims do not require construction.” Pet. 22. Patent Owner does not propose, or comment on, any claim construction. See, generally Prelim. Resp. We do not perceive the need to construe any claim limitation. Claims must be construed “only to the extent necessary to resolve the controversy.” AstraZeneca AB v. Mylan Pharms. Inc., 19 F.4th 1325, 1345 (Fed. Cir. 2021) (quoting Vivid Techs., Inc. v. American Science & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (“Because we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy,’ we need not construe the claim preambles here where the construction is not ‘material to the [obviousness] dispute.’” (citations omitted)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,134,398 - Truist Bank v. United Services Automobile AssociationInstitution deniedPTAB · May 18, 2023 · IPR2023-00184 · APJ Kristen L Droesch · IPR · Institution
The Board denied institution because Patent Owner’s stipulation and concurrent institution of the higher-ranked petition meant a second petition was not justified.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“We agree with Patent Owner that Petitioner should be bound to its initial ranking of the ’183 IPR Petition as the first ranked of the concurrently filed parallel petitions. As pointed out by Patent Owner, Petitioner does not cite any cases to support the proposition that it is permissible to redesignate a first ranked petition after the filing of preliminary responses. See Prelim. Sur-reply 2. Moreover, although Petitioner relies on the Board’s Final Written Decision in IPR2021-01077, as a reason to redesignate the first ranked petition, we note it was foreseeable that the Final Written Decision would issue in January approximately one year after trial was instituted in IPR2021-01077. It was also a foreseeable possibility that all of the claims might be found unpatentable on the basis of Garcia, Randle, and Slater in the Final Written Decision of IPR2021-01077 as it was one of three possible outcomes (i.e., finding all, some, or none of the claims unpatentable). Likewise, it was also a foreseeable possibility that Patent Owner might stipulate not to challenge the prior art status of Popadic because such stipulations are expressly suggested in the Trial Practice Guide as way for a patent owner to avoid additional petitions. See CTPG 61. These foreseeable circumstances do not provide sufficient reason or justification to permit Petitioner to now designate this Petition as the first ranked petition. Accordingly, we determine that Petitioner is bound to its initial designation ranking the 183 IPR Petition ahead of this Petition. Under the present circumstances, where Patent Owner has stipulated not to challenge the prior art status of Popadic and we concurrently institute trial based on the higher ranked petition filed in IPR2023-00183, we are not persuaded that two petitions are warranted. Because there is no dispute that Popadic is prior art, there is no need to consider the merits of a second petition. For the foregoing reasons, Petitioner does not sufficiently justify the need for two petitions against the same claims of the ’753 Patent. In light of the totality of the circumstances, including that we concurrently institute inter partes review in IPR2023-00183 challenging the same claims of the ’753 Patent on all grounds, we exercise discretion under 35 U.S.C. § 314(a) and decline institution in this proceeding.” slip op. at 14
Discretionary denialPatents in suitUS 11,182,753 - PTAB · Apr 24, 2023 · IPR2023-00023 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 6–17 over all proposed grounds, finding a reasonable likelihood of success on claim 13 based on Fuller anticipation and Fuller-Camahan obviousness.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“granting Petitioner’s motion is speculative. Accordingly, the facts underlying this factor are neutral.” slip op. at 12
- Other 314aDenied
“Accordingly, the facts underlying the merits of Petitioner’s challenges to the ’017 patent claims are neutral. G. Holistic Assessment of the Fintiv Factors On this record, after weighing all of the factors and taking a holistic view, we determine that the facts in this case that weigh against exercising discretion outweigh the facts that favor exercising discretion. Accordingly, we determine that the circumstances presented weigh against exercising our discretion under 35 U.S.C. § 314(a) to deny institution of inter partes review based on the Texas litigation. Additionally, given that our analysis of the first five Fintiv factors does not favor exercising our discretion to deny institution, we need not consider whether the Petition presents a compelling, meritorious challenge. Commscope Techs., LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (designated precedential).” slip op. at 19
- Strike new argumentNew argument disregardedOther
“As a preliminary matter, we agree that Petitioner’s arguments regarding the merits of its challenges are outside the authorized scope of the Preliminary Reply. In our communication authorizing the additional briefing, we instructed the parties that “[t]he [Preliminary] Reply is limited . . . to addressing the Fintiv issues identified by Petitioner below.” Ex. 3002, 1. Petitioner identified those issues as “Patent Owner’s positions on Fintiv factors 1-4 and 6, and Patent Owner’s ‘additional considerations’ related to Fintiv.” Id. Petitioner’s arguments regarding the merits of its challenges exceed the allowed scope for the Preliminary Reply, and we therefore do not consider such unauthorized arguments.” slip op. at 19
- Adverse judgmentAdverse judgmentOther
“Here, Patent Owner filed a statutory disclaimer of claims 1–5 of the ’017 patent. Prelim. Resp. 8–9; Ex. 2001. Based on our review of Exhibit 2001, we determine that a disclaimer of claims 1–5 of the ’017 patent under 35 U.S.C. § 253(a) has been filed with the Office as of January 24, 2023. Based on the information in the public record, we find that the disclaimer complies with the above-listed requirements of 37 C.F.R. § 1.321(a). Because claims 1–5 have been disclaimed under 35 U.S.C. § 253(a), in compliance with 37 C.F.R. § 1.321(a), we do not reach challenges to claims 1–5. As a result, the remaining challenged claims are claims 6–17 (“the challenged claims”).” slip op. at 7
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,832,017 - Sonos, Inc. v. Google LLCInstitutedPTAB · Apr 14, 2023 · IPR2022-01594 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1–3, 5–8, 10–13, and 15 on all challenged grounds, finding a reasonable likelihood that Rosenberger anticipates at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Technology, Inc., 815 F.3d 1356, 1363 Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). Petitioners cannot satisfy their burden of proving obviousness by employing “mere conclusory statements.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016). slip op. at 9
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Because the Petition “presents to the Office the same or substantially the same art previously presented to the Office,” we turn to the second part of the Advanced Bionics framework and consider Becton, Dickinson factors (c), (e), and (f) in determining “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” See Advanced Bionics, IPR2019-01469, Paper 6 at 7–8, 10. With regard to the alleged error, the Petition states, “[b]ecause the Examiner did not substantively evaluate Rosenberger during prosecution of the ’128 Patent and assumed that the allowed claims required a limitation not found in the claims, the Examiner erred in a manner material to patentability.” Pet. 11. Specifically, the Petitioner argues, “the Examiner incorrectly assumed that the allowed claims required each of the claimed ‘plurality of electronic devices’ to operate in a ‘low power state.’ But the allowed claims do not recite such a limitation.” Id. We find this argument persuasive. In discussing the art including Rosenberger, the Examiner stated: [T]he combination of A-BB taken in any order fails to teach or suggest the complex claim limitations as a whole. It is clear that even if the server is a second device and in a semi-sleep state e.g. monitor off, fucnationally [sic] as a sleep state, the system still requires the first device and not the second server device 885 based vocie [sic] response 850 to process the voice command as shown in fig. 8B . . . in element 830. At best it will compartmentalize different low power states only on the first device. . . . Therefore the combination taken in any order fails to teach or suggest the complex claims as a whole. Ex. 1004, 11–12 (emphasis added); see also id. at 10 (the Examiner finding that the prior art discloses a “[s]emi-sleep state whic[h] can only process commands on mobile device” (emphasis omitted)). None of the claims of the ’128 patent recite a server, semi-sleep state, or low power state. Ex. 1001, 35:54–38:28. The Examiner never identified any limitation that distinguished the claims of the ’128 patent from the prior art (including Rosenberger) or specifically explained what recitation of the claims makes them patentable. See id. at 6–13. It was material error to rely on limitations not present in the claims in allowing the claims. And, as shown above, there is a reasonable likelihood that Rosenberger discloses the methods and devices recited in the allowed claims. We find that the Examiner erred in a manner material to the patentability of the challenged claims. For these reasons, we believe it is not appropriate to exercise our discretion under 35 U.S.C. § 325(d) to deny institution.8” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a “POSITA [(person of ordinary skill in the art)] in the technology field of the ’128 Patent would have had the equivalent of a four-year degree from an accredited institution (typically denoted as a B.S. degree) in electrical or computer engineering, or a related field, and approximately 2–4 years of experience in the field of voice and/or audio processing, or an equivalent level of skill, knowledge, and experience.” Pet. 22 (citing Ex. 1002 (Johnson Decl.), ¶¶ 63–65.). Patent Owner does not present a position on the level of ordinary skill in the art at the time of the invention. See generally Prelim. Resp. Petitioner’s proposal is consistent with the technology described in the Specification of the ’128 patent and the cited prior art. In order to determine whether Petitioner has demonstrated a reasonable likelihood of showing the unpatentability of at least one of the challenged claims, we adopt Petitioner’s proposed level of skill in the art.4” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“B. Legal Standards In order for a prior art reference to serve as an anticipatory reference, it must disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Anticipation “requires that every element and limitation of the claim was previously described in a single prior art reference, either expressly or inherently, so as to place a person of ordinary skill in possession of the invention.” Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008) (citing Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003); Continental Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1267–69 (Fed. Cir. 1991)). “[U]nless a reference discloses within the four corners of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).” slip op. at 8
§ 102 anticipationDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,812,128 - Sonos, Inc. v. Google LLCInstitutedPTAB · Apr 14, 2023 · IPR2022-01592 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–3, 8–12, 14–18, and 20 on all challenged grounds, finding a reasonable likelihood that Rosenberger anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Summary as to Independent Claim 16 In the absence of any contradictory arguments or evidence, we determine that Petitioner has shown a reasonable likelihood of establishing the unpatentability of independent claim 16 as anticipated by Rosenberger. Although we appreciate that Patent Owner has not yet presented any arguments or evidence on the merits of Petitioner’s challenge to independent claim 16 as anticipated by Rosenberger, this challenge appears strong. On that basis, we determine that the information presented in the Petition demonstrates a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable and that inter partes review should be instituted.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether 5 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. 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 22
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“recognize from the electrical signals when a speech command from an expected vocabulary or grammar has likely been spoken, and (ii) to act thereon to first produce a weighted signal representing the quality of a just-recognized speech command, and then produce, only in the event the value of said weighted signal exceeds the respective values of all weighted signals produced by other devices within said building space that simultaneously recognized the same speech command, predetermined system control signals by which a desired effect, reflective of the speech commands, is achieved within the building space by system controllers or automated mechanisms that respond to such system control signals; (c) a transmitter operatively coupled to the microcontroller for selectively transmitting the weighted signal and the predetermined system control signals into the building space; (d) a receiver, operatively coupled to the microcontroller, for receiving weighted signals emanating from one or more other control devices within the building space; and (e) audio output circuitry through which the microcontroller can transmit audible sounds to interact with and provide indications of the system status to the system user. A preferred characteristic of the control device of the invention is that, within a predetermined time interval after it has produced the weighted signal in response to recognizing a given speech command, the microcontroller operates to compare the value of this signal with the respective value(s) of the weighted signals produced by all other control devices that have been triggered by the same speech command at the same time and have transmitted their respective weighted signals to such microcontroller. In the event the value of such weighted signal exceeds the respective values of all other weighted signals with which it has been compared, the microcontroller proceeds in handling the given speech command. Otherwise, it defers handling of the speech command to the other devices and reverts to a “listening” mode awaiting subsequent speech commands. Id. at 4:6–47.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“E. Challenges Based on Rosenberger and Kim Petitioner also challenges claim 11 as unpatentable as obvious in view of a combination of the teachings of Rosenberger and Kim. Pet. 4, 60–71. Having already determined that: (1) Petitioner has shown a reasonable likelihood of establishing the unpatentability of claim 11 as anticipated by Rosenberger without having to consider Kim; and (2) institution is appropriate because the information presented in the Petition demonstrates a reasonable likelihood that at least one of the claims challenged in the petition is unpatentable, we determine that it is unnecessary for us to analyze this challenge in order to decide to institute inter partes review. We would like to have the record more fully developed and to hear from Patent Owner on the merits before substantively analyzing this challenge.” slip op. at 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,024,311 - PTAB · Mar 16, 2023 · IPR2022-01391 · APJ Mitchell G Weatherly · IPR · Institution
The Board instituted IPR on claims 30–33, 35, 37–40, 43, 45–48, 51, 53, 54, 61, 62, 64, 65, 67, 69, 70, 72, and 75 on all petitioned grounds, and joined Samsung to IPR2022-01232.
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 filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons expressed below, we (1) institute inter partes review on the same grounds instituted in the Meta IPR, and (2) grant the Motion, subject to the conditions set forth below. B. Related Proceedings” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_ 20220621_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 9; Reply 1. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“Based on our review of the before us, we find that Petitioner demonstrates that allowing it to join the Meta IPR as a party will not materially lengthen the schedule, increase cost, or add to the complexity of briefing or discovery in the Meta IPR. Accordingly, we grant Petitioner’s Motion and add it as a party to the Meta IPR.” slip op. at 8
Discretionary denialPatents in suitUS 8,630,234 - PNC Bank N.A. v. United Services Automobile AssociationRehearing deniedPTAB · Mar 8, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Rehearing
The Board denied Patent Owner’s rehearing request, leaving in place the final written decision finding claims 1–18 unpatentable.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“II. STANDARD FOR REHEARING A request for rehearing “must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, a reply, or a sur-reply.” 37 C.F.R. § 42.71(d). “The burden of showing a decision should be modified lies with the party challenging the decision.” Id.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“misapprehended or overlooked matters relevant to whether an ordinary artisan would have reasonably expected success in combining Garcia and Randle. Req. 1–5. We have reviewed and carefully considered all of the arguments presented, but determine Patent Owner fails to show that the Decision misapprehended or overlooked any material arguments or evidence. To provide context for our discussion, we begin with a targeted summary of the Decision, and then we turn to Patent Owner’s specific arguments.” slip op. at 2
§ 103 obviousnessPatents in suitUS 10,621,559 - PTAB · Jan 31, 2023 · IPR2022-01231 · APJ Christopher L Ogden · IPR · Institution
The Board instituted review of claims 1–3, 6, 10, 11, 19–22, 24, 25, 28, and 29 on all petitioned grounds after finding a reasonable likelihood that independent claims 1, 11, 20, and 29 were obvious.
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 filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). Based on our review of the record, we conclude that Petitioner is reasonably likely to prevail with respect to at least one of the challenged claims.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“In response, Patent Owner contends that Petitioner has failed to demonstrate than an ordinarily skilled artisan would have been motivated to combine teachings of Buckley and Bates in the manner suggested by Petitioner. Prelim. Resp. 43–46. However, Patent Owner cites no expert testimony to controvert Dr. Madisetti’s testimony or his opinions regarding how an ordinarily skilled artisan would have been motivated to combine teachings of Buckley and Bates or whether an ordinarily skilled artisan would have reasonably expected success in doing so. See id. (citing specific portions of Bates in support of its attorneys’ opinions regarding how an ordinarily skilled artisan would understand those cited portions). On the current record, we find Dr. Madisetti’s uncontroverted testimony on these topics to demonstrate that an ordinarily skilled artisan would have been motivated to combine teachings of Buckley and Bates as suggested by Petitioner and would have reasonably expected success in doing so. Accordingly, we find that Petitioner has demonstrated a reasonable likelihood of proving that the combined teachings of Buckley and Bates renders at least independent claims 1, 11, 20, and 29 unpatentable as obvious. F. Discretionary Denial” slip op. at 19
- Expert testimonyPetitioner expert creditedDecided for petitioner
“By contrast, relying in part on uncontroverted testimony from Dr. Madisetti, Petitioner contends that an ordinarily skilled artisan would have understood that the IP address within the SIP URI is at least a “network address” for the calling party that constitutes the “location identifier,” which is a type of address that the ’234 patent expressly identifies as being a wellknown type of “location identifier.” Pet. 27 (citing Ex. 1005, 5:25–27, 9:27; Ex. 1001, 12:19–20; Ex. 1003 ¶ 73). We also note that dependent claim 3 of the ’234 patent expressly narrows the scope of the “location identifier” to the “IP address of the mobile telephone in a wireless IP network.” Ex. 1001, 34:61–63. Based on the state of the record before us, which includes uncontroverted testimony by Dr. Madisetti, we find that Petitioner demonstrates a reasonable likelihood of proving that Buckley’s SIP URI constitutes the “location identifier” of element 1b.iii and that Buckley otherwise teaches or suggests the remaining limitations recited in element 1b.iii.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We decline to exercise our discretion under Fintiv to deny institution of inter partes review. On June 21, 2022, the Director of the USPTO issued an Interim Procedure for Discretionary Denials in AIA Postgrant Proceedings with Parallel District Court Litigation, available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_ discretionary_denials_aia_parallel_district_court_litigation_memo_2022062 1_.pdf (the “Interim Procedure”). The Interim Procedure provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 7. Here, the Petitioner stipulates that it “will not pursue the grounds raised, or that reasonably could have been raised, in this IPR in the parallel litigation if IPR is instituted.” Pet. 7; Reply 3. We therefore adhere to the Interim Procedure in this Decision and decline to exercise our discretion to deny institution of inter partes review upon this basis.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,630,234 - PNC Bank N.A. v. United Services Automobile AssociationAll claims unpatentablePTAB · Jan 20, 2023 · IPR2021-01077 · APJ Juliet Mitchell Dirba · IPR · Final written decision
Claims 1–18 are unpatentable as obvious under the listed combinations of Garcia, Randle, Slater, and additional references.
RulingsFinal written decision- Skill levelOther
“B. The Level of Ordinary Skill in the Art” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other
“1. “Computing Device” and “Accepting . . .” Limitations The term “computing device” appears only in the preamble of the” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“the user,” which includes the check image as well as recognition data entered by the user (e.g., check amount). Ex. 1103, 10:10–18, 11:7–15; see also id. at 5:14–20, 12:9–11 (cited in Inst. Dec. 42 n.17). Randle similarly indicates that its engine includes OCR software, and specifically, Randle states that its QA considers a “human input amount” and an “OCR amount.” Ex. 1104 ¶¶ 19, 21, 42, 74, Fig. 9B (items 117, 121). Although Randle does not explain how the QA uses these two pieces of data, Slater expressly teaches that these amounts should be compared to identify transactions that require manual review by a customer service operator. Ex. 1105 ¶¶ 22–23, 28. Based on these disclosures, Petitioner’s declarant, Dr. Noble, opines that a person of ordinary skill in the art would have been motivated to (and able to) include Slater’s comparison in the Garcia-Randle system with a reasonable expectation of success. See Ex. 1102 ¶¶ 69–75, 111. In support, Dr. Noble explains that this comparison would improve reliability because “[a]ny discrepancy would mean there was error either in the user input or the image from which the check amount is read,” and he notes that “there would be no reason to capture both OCR and customer-entered versions unless there was a possibility of such discrepancy.” Id. ¶ 72. We credit Dr. Noble’s testimony on these points because it is supported by the cited references. Accordingly, we find that a person of ordinary skill in the art would have been motivated to include Slater’s comparison in the Garcia- Randle system, and that the resulting combination teaches elements 1[h] and 1[i]. As for elements 1[j] and 1[k], Petitioner again points to Garcia’s statement that the financial institution’s computer equipment includes an OCR system for recognizing, verifying, and processing the check image. Pet. 50–51. According to Petitioner, Randle teaches that the payee bank collects the MICR data and, from it, determines a routing number identifying the payor bank. Id. at 51 (citing Ex. 1104 ¶¶ 18–19), 54 (citing Ex. 1104 ¶¶ 18–19, 76, Fig. 11A (item 150); Ex. 1102 ¶ 120). According to Petitioner, a person of ordinary skill in the art would have understood that Randle reads the MICR data “optically” from the check image because “that was a standard method of collecting MICR data from a check image” and because Randle expressly teaches performing an OCR on the check number. Id. at 51 (citing Ex. 1102 ¶ 114; Ex. 1104 ¶ 74). In the alternative, Petitioner contends that an ordinarily skilled artisan would have been motivated to optically read the MICR data because, in the proposed combination, the payee bank only receives an image of the check. Id. at 52–54 (citing Ex. 1102 ¶ 115–118); see also id. at 61–62 (addressing contention that payee bank also includes this component). We find that the Garcia-Randle combination teaches elements 1[j] and 1[k]. As noted above, Garcia teaches using OCR to recognize, verify, and process the check image. E.g., Ex. 1103, 11:7–15. Randle discloses reading the MICR line depicted in the check’s image. Ex. 1104 ¶ 19 (“The deposit bank 4 captures the check and related information by a scan 5 to create an image of the front and back of the check and collects information such as . . . the MICR data.”). We are persuaded that an ordinarily skilled artisan would have been motivated to combine Garcia and Randle so that the MICR line is optically read with an OCR performed by the bank’s computer equipment. In particular, we agree with Petitioner that, in the proposed Garcia-Randle combination, the bank receives an image of a check rather than the physical check itself (see Pet. 52), and Garcia suggests that an OCR system at the bank is used for recognizing and verifying the check’s information. See, e.g., Ex. 1103, 7:18–8:14, 11:7–13. In addition, we credit Dr. Noble’s testimony that optically reading the MICR line “was a well-known and typical way of collecting MICR data from an image of a check,” and we credit his testimony that an ordinarily skilled artisan would have had a reasonable expectation of success in combining Garcia and Randle in this way.41 Ex. 1102 ¶¶ 114–117. Further, we find that a person of ordinary skill in the art would have understood Randle to teach determining a routing number from the MICR line. E.g., Ex. 1104 ¶¶ 18–19, 36, 76; Ex. 1102 ¶ 120. As to element 1[l], Petitioner contends that Randle’s check” slip op. at 62
- ExcludeMotion to exclude, grantedOther
“Accordingly, we dismiss Petitioner’s Motion to Exclude (Paper 58) as” slip op. at 80
Patent outcomesUS 10,621,559 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,621,559
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.