- PTAB · Feb 20, 2024 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1, 7, 9, 32, 38, and 40, finding a reasonable likelihood of prevailing on anticipation by Spain and obviousness over Spain as evidenced by Agiwal.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. We also agree with Petitioner that the timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.6 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“As Petitioner asserts, in the prosecution history, Dressler is only referred to for the rejection of dependent claims for limitations not found in the challenged claims. Ex. 1002, 56; see also Pet. 45–46; PO Resp. 9–10. Further, Petitioner points out that the Examiner’s reliance on Dressler was for a disclosure that is common to Spain, but is not relied upon in the Petition. Pet. 45–46, Ex. 1006 ¶ 53. As such, there is no evidence in the prosecution history that the Examiner’s reliance on Dressler is related to any issue in the challenges here. Moreover, while the Examiner’s reference to Dressler infers that the Examiner performed some evaluation of that reference, Spain contains additional disclosures that are not in Dressler. See Ex. 1006 ¶¶ 64–65, 67, 82–84, 70–72, 80, Fig. 15; Ex. 1016. Accordingly, any evaluation of Dressler does not reflect a full evaluation of Spain. There is no support in the prosecution history of an evaluation of Spain, except for the Examiner’s initialization of an Information Disclosure Statement, which is not indicative of a substantive evaluation. Similarly, the references to the prior art disclosures alleged by Patent Owner to be the same as Spain were only initialed on Information Disclosure Statements. See Prelim. Resp. 12. Accordingly, the record does not provide support that Spain was substantively evaluated by the Examiner during prosecution.” slip op. at 19
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is anticipated by Spain. b. Claim 32 Claim 32 is a system claim that recites similar limitations to the limitations of method claim 1. Petitioner relies on similar evidence and argument to that presented for claim 1 in support of Spain’s disclosures of the claim 32 limitations. Pet. 35–38. Patent Owner presents no additional arguments specifically directed to claim 32 that we have not already addressed. See generally Prelim. Resp. We have reviewed the Petition’s showing for this claim and find that sufficient evidence has been provided in support of the anticipation challenge at this stage of the proceeding. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 32 is anticipated by Spain.” slip op. at 34
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court issued claim constructions in the Google action for all disputed terms of the ’753 patent claims at issue. Ex. 1028. Petitioner uses the district court’s construction for the terms: “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 19–21 (citing Ex. 1008 ¶ 54; Ex. 1024, 1, 2; Ex. 1028, 8, 18, 20). Petitioner proposes that any other claim terms not addressed by the district court should be interpreted consistent with the Phillips standard. Id. at 19. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 39. For the purposes of this Decision, we will use the district court’s claim constructions, which have been agreed to by the parties at this juncture. We determine that we need not expressly construe any claim terms at this juncture. 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 22
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · Feb 20, 2024 · IPR2023-01211 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 4, 25, 26, and 35, finding a reasonable likelihood that Google would prevail on at least one asserted anticipation or obviousness ground.
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 for the sole purpose of determining 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, 4, 25, 26, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.10 Thus, we determine that this factor weighs against the exercise of discretionary denial.” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing 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) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 30–31. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 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 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“The first four of Petitioner’s proposed constructions are consistent with the clam constructions issued by the district court in the Google Action (see Ex. 1028, 8, 10, 20) or a position taken by Patent Owner in the Google Action (see Ex. 1016 ¶¶ 108–109). Petitioner cites Exhibit 1024 as supporting its contention that the parties have stipulated as to the order of the “collecting,” “modifying,” and “comparing” steps in claim 1, but this Exhibit does not appear to support the stipulation. See Ex. 1024. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of [the] Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.”6 Prelim. Resp. 31. For purposes of this Decision, we adopt the undisputed claim constructions that Petitioner proposes. These constructions are consistent with the claim language and the specification of the ’104 patent and are further supported by the reasoning provided by the district court’s claim construction order. See Ex. 1028. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The 6 In other sections of the Preliminary Response, Patent Owner appears to argue in favor of a modified construction of “grid point.” Prelim. Resp. 17– 25; see also id. at 32 (“As further explained above in Section III, the district court concluded that ‘grid point,’ as used in the ’104 Patent, specifically refers to ‘a point associated with representative calibration data for an area’ that is generated based on analysis of calibration data.”) (Patent Owner’s emphasis). We disagree with these arguments for the reasons discussed below. Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · Jan 19, 2024 · IPR2023-01229 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 23–28 and 41–46 based on obviousness over Kanamori and McCowan, finding a reasonable likelihood that Petitioner would prevail.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage and on this record, Petitioner sufficiently shows that Kanamori discloses a microphone device corresponding to the recited microphone array in [23P] (Pet. 11), Kanamori’s main signal is a first virtual microphone as recited in [23A] and it would have been obvious to use omnidirectional microphones as recited in [23B] (id. at 11–16), Kanamori’s noise-reference signal m2 is a second virtual microphone as recited in [23C] (id. at 16–17), Kanamori’s second combination is different from the first as recited in [23D] because, unlike m1’s formation, m2’s formation does not involve multiplication by an amplification ratio (id. at 17–18), Kanamori discloses or suggests the first linear response recited in [23E] as discussed above and shown by the plots in the Petition (id. at 18–25), Kanamori discloses or suggests human speech, as in [23H], because Kanamori states that the voice is “from the talker” (id. at 43). Thus, Petitioner has shown a reasonable likelihood of prevailing as to the unpatentability of claim 23. See id. at 11–43.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Petitioner’s explanation is sufficient for the Board to institute trial in this case. Specifically, Petitioner asserts that, for speech and noise with farfield origins, Kanamori’s microphone device would struggle to differentiate and suppress noise coming from the same direction as the speech. Id. at 30 (citing Ex. 1005 ¶ 168; Ex. 1003 ¶ 87). According to the Petition, it would have been obvious to modify Kanamori’s noise-reference signal m2 to account for different amplitudes, which may be significant for near-field cases. Id. at 31 (citing Ex. 1006, 90; Ex. 1003 ¶ 89). Petitioner’s rationale relies upon McCowan to show that it would have been obvious to modify Kanamori’s noise-reference signal m2 in those near-field cases. Id. Petitioner’s arguments are adequately supported by the record at this” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“II. MOTION FOR JOINDER Petitioner filed a Motion for Joinder (Paper 3), requesting joinder as a petitioner in IPR2023-00561. IPR2023-00561 had been joined to IPR2022- 01061. IPR2023-00561, Paper 9 (Granting Motion for Joinder). On August 10, 2023, the Board terminated both IPR2022-01061 and IPR2023- 00561. IPR2023-00561, Paper 30. Thus, the Motion for Joinder is dismissed as moot.” slip op. at 2
- Skill levelSkill level board ownDecided for petitioner
“According to Patent Owner, A person of ordinary skill in the art (‘POSITA’) would have a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing. Work experience can substitute for formal education and additional formal education can substitute for work experience. Prelim. Resp. 15. In Patent Owner’s view, this agrees with Petitioner’s definition. Id. (citing Pet 4–5; Ex. 1003 ¶¶ 24–25). We see no meaningful differences in the parties’ proposed qualifications that would affect our decision here. In this decision, we adopt a definition of one of ordinary skill in the art consistent with the parties’ proposals. See Pet. 4–5; Prelim. Resp. 15. To the extent that the parties disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 8
Claim construction§ 103 obviousnesscites KSRPatents in suitUS 8,503,691 - PTAB · Jan 19, 2024 · IPR2023-01228 · APJ Jason M Repko · IPR · Institution
Instituted review of claims 1–22 and 29–40 on obviousness over Kanamori and McCowan; Petitioner showed a reasonable likelihood of prevailing.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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). For the reasons discussed in this Decision, Petitioner has met this standard. Thus, we institute an inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“At this stage, we disagree with Patent Owner because “[a] suggestion, teaching, or motivation to combine the relevant prior art teachings does not have to be found explicitly in the prior art . . . .” In re Kahn, 441 F.3d 977, 987–88 (Fed. Cir. 2006). Although “demonstrating a teaching, suggestion, or motivation to combine known elements” by identifying language in a reference that specifically states a motivation can be a “helpful insight,” “[t]he obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the importance of published articles and the explicit content of issued patents.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007). Instead, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Id. at 420.” slip op. at 11
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“II. MOTION FOR JOINDER Petitioner filed a Motion for Joinder (Paper 3), requesting joinder as a petitioner in IPR2023-00559. IPR2023-00559 had been joined to IPR2022- 01060. IPR2023-00559, Paper 9 (Granting Motion for Joinder). On August 10, 2023, the Board terminated both IPR2022-01060 and IPR2023-00559. IPR2023-00559, Paper 13; IPR2022-01060, Paper 30. Thus, the Motion for Joinder is dismissed as moot.” slip op. at 2
§ 103 obviousnesscites KSRPatents in suitUS 8,503,691 - PTAB · Jan 9, 2024 · IPR2023-01177 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–28 over all asserted challenges, finding a reasonable likelihood of success on at least one claim; it dismissed Sony’s joinder motion as moot.
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, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner identifies itself, Sony Electronics Inc., as well as Sony Group Corporation, Sony Corporation, and Sony Corporation of America, as the real parties-in-interest. Pet. 93. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 6, 2. institute an inter partes review of claims 1–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 3, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. We dismiss Petitioner’s Motion for Joinder as moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“have at least a bachelor of science in electrical engineering, computer engineering, computer science, mechanical engineering, or a related discipline, with at least two years of relevant experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Pet. 6. Petitioner also asserts that “[a]dditional education or industry experience may compensate for a deficit in the other.” Id. Dr. Kenny’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 22–23. Patent Owner asserts that “[a] person of ordinary skill in the art would have a bachelor’s degree in computer engineering, computer science, electrical engineering, mechanical engineering, or a similar field, and approximately three years of industry or academic experience in a field related to acoustics, speech recognition, speech detection, or signal processing.” Prelim. Resp. 13. Patent Owner also asserts that “[w]ork experience can substitute for formal education and additional formal education can substitute for work experience.” Id. Dr. Sayeed’s testimony supports Patent Owner’s assertions. See Ex. 2002 ¶ 26. Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“In regards to Patent Owner’s position that the filter β(z) described in the Specification is the claimed filter (Prelim. Resp. 11), we note that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term. Patent Owner also asserts that its proposed claim construction should be adopted because under a broad claim construction the term could include a delay filter, but then in view of dependent claim 7, this would result in applying two delays in succession. Prelim. Resp. 16. Patent Owner, with Dr. Sayeed’s supporting testimony, asserts that because “[a]pplying two delays in succession is equivalent to applying a single delay for the sum of those two delays,” so a person of skill in the art would realize the filter at issue cannot be a delay filter. Id.; Ex. 2002 ¶ 62. On this record, we find that Patent Owner’s assertion, and the supporting testimony, fail to provide support explaining why two delays in succession would not be acceptable. The parties may present additional briefing on this issue during trial.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Jan 9, 2024 · IPR2023-01155 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–28 and all petitioned challenges, finding a reasonable likelihood of success on at least one claim; the joinder motion was dismissed as moot.
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, the Preliminary Response, and the evidence of record, and for the reasons explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we 1 Petitioner identifies itself, LG Electronics Inc., as the real party-in-interest. Pet. 96. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 6, 2. institute an inter partes review of claims 1–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingOther
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 3, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. We dismiss Petitioner’s Motion for Joinder as moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed petitioner constructionDecided for petitioner
“the Specification is the claimed filter (Prelim. Resp. 11), we note that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term. Patent Owner also asserts that its proposed claim construction should be adopted because under a broad claim construction the term could include a delay filter, but then in view of dependent claim 7, this would result in applying two delays in succession. Prelim. Resp. 16. Patent Owner, with Dr. Sayeed’s supporting testimony, asserts that because “[a]pplying two delays in succession is equivalent to applying a single delay for the sum of those two delays,” so a person of skill in the art would realize the filter at issue cannot be a delay filter. Id.; Ex. 2002 ¶ 62. On this record, we find that Patent Owner’s assertion, and the supporting testimony, fail to provide support explaining why two delays in succession would not be acceptable. The parties may present additional briefing on this issue during trial.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Jan 9, 2024 · IPR2023-01128 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR of claims 1, 2, and 5–28 on all petitioned grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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, the Preliminary Response, the Reply, the Sur-Reply, and the evidence of record, and for the reasons 1 Petitioner identifies itself, Meta Platforms, Inc., as the real party-in-interest. Pet. 97. 2 Patent Owner identifies itself, Jawbone Innovations, LLC, as the real partyin-interest. Paper 7, 2. explained below, we determine Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 2, and 5–28 in the ’611 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“seeking joinder as a party in the Amazon IPR and consolidation with the Amazon IPR. Paper 2, 1. In August 2023, the Board terminated the Amazon IPR in view of representations by Amazon and Patent Owner that they had settled their dispute in the Amazon IPR and related district court litigation. IPR2023-00286, Paper 16, 2. Subsequently, in September 2023, Petitioner filed an Unopposed Motion to Withdraw the Motion for Joinder, stating that “in view of the Board’s Termination Order in the Amazon IPR, Petitioner should be permitted to withdraw its Joinder Motion.” Paper 9, 2. Based on the foregoing, we grant Petitioner’s Unopposed Motion to Withdraw the Motion for Joinder, as the underlying Motion for Joinder is moot in view of the Amazon IPR termination.” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner and Patent Owner’s proposed levels of skill in the art are similar, except that Patent Owner proposes slightly more experience, i.e., “approximately three years of industry or academic experience” versus “at least two years of relevant experience.” Prelim. Resp. 13; Pet. 6–7. Based on the current record and for purposes of analysis, we accept Petitioner’s description of an ordinarily skilled artisan, with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, as it is consistent with the ’611 patent and the asserted prior art.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Plain and ordinary meaningDecided for petitioner
“that filter,” based on the ’611 patent Specification’s disclosure that β(z) “describes the relationship between O and calibrated O for speech.” Prelim. Resp. 11; Prelim. Sur-Reply 1; Ex. 1001, 5:31–32. We agree with Patent Owner that “the specification may reveal a special definition given to a claim term by the patentee that differs from the meaning it would otherwise possess.” Phillips, 415 F.3d at 1316. However, “[t]o act as its own lexicographer, a patentee must ‘clearly set forth a definition of the disputed claim term’ other than its plain and ordinary meaning.” Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012) (quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002)). Moreover, “the specification may reveal an intentional disclaimer, or disavowal, of claim scope,” and it is the inventor’s disavowal that is dispositive of the claim construction. Phillips, 415 F.3d at 1316; see also Retractable Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296, 1306 (Fed. Cir. 2011) (quoting Epistar Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1335 (Fed. Cir. 2009) (“To disavow claim scope, the specification must contain ‘expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope.’”)). Furthermore, it is impermissible to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Our view, at this juncture, is that the Specification does not indicate that there is an intended “special definition” for the term “filter that describes a relationship for speech between the first physical microphone and the second physical microphone.” Moreover, the Specification does not contain an express any disavowal of the scope of the claim term to limit the scope of the term to Patent Owner’s relied-upon citation to the disclosure relating to β(z). See Ex. 1001, 5:31–32. Accordingly, on this record, in the absence of a special definition of the term, we decline to import limitations into the claim term and read in the β(z) embodiment only into the term.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,326,611 - PTAB · Dec 12, 2023 · IPR2023-01065 · APJ Georgianna W Braden · IPR · Institution
The Board instituted IPR on claims 1–20, finding a reasonable likelihood that the challenged claims would be unpatentable under the stated §103 grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4. An inter partes review may not be instituted unless it is determined that “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 (2018); see also 37 C.F.R § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review of the ’080 patent and all of the asserted challenges to patentability.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied
“Petitioner moves for joinder to and consolidation with related IPR proceeding IPR2023-00284 under 35 U.S.C. § 315 and 36 C.F.R. § 42.122(b). Paper 3 (Motion for Joinder). IPR proceeding IPR2023-00284 has been terminated due to settlement. See IPR2023-00284, Paper 16. Thus, there is no proceeding with which to join the present case. Accordingly, Petitioner’s motion for joinder and consolidation is denied.” slip op. at 3
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Additionally, we credit Dr. Vipperman’s testimony that a person of ordinary skill in the art at the critical time would have understood that this disclosure in Ikeda teaches a linear filter. See id. ¶ 132 (citing Ex. 1020, 16– 17, Fig. 2.2; Ex. 1028, 366–367). Dr. Vipperman citation to Ex. 1028 is particularly instructive because the reference explains that a tapped delay line structure, such as that used in Ikeda, is a type of a linear filter. See Ex. 1028, 367. Thus, we are persuaded that Ikeda teaches a linear filter, which results in linear proportionality. Accordingly, at this stage of the proceeding, based on Ikeda itself and the supporting testimony of Dr. Vipperman, we are satisfied Petitioner has shown sufficiently that Ikeda teaches “by a varying linear transfer function between the plurality of combinations of signals, wherein the denoised output signals include less acoustic noise than acoustic signals received at the first and second physical microphones.”” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not assert a different level of skill in the art at the time of the alleged invention and uses Petitioner’s proposed level of skill. Prelim. Resp. 19 (citing Ex. 2002 ¶ 26). For the purposes of this Decision, we too adopt Petitioner’s level of ordinary skill in the art because it appears consistent with the problems addressed in the ’080 Patent and the prior art of record.” slip op. at 15
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,779,080 - PTAB · Dec 12, 2023 · IPR2023-00847 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood that Hiraishi and Butt render at least one challenged claim obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We are persuaded that because of the facts here—an obviousness challenge asserted in this Petition and an anticipation challenge9 in the Micron ’237 IPR—that the contentions here were not previously considered by the Board. Although Patent Owner argues that the contentions in the instant Petition and the Micron ’237 IPR are substantially the same (Prelim. Resp. 23), we do not agree because the argument and evidence here is being viewed in light of an obviousness standard rather than that of an anticipation standard and Petitioner has provided additional argument and evidence that 8 We agree with Patent Owner that the first part of § 325(d) requires either that the same or substantially the same art previously was presented to the Office or the same arguments be previously presented. PO Sur-reply 4–5. 9 The evaluation of the anticipation challenge in the Micron ’237 IPR was dispositive in determining the outcome of the decision on institution on all grounds. See Ex. 1041, 14–21. is not in the Micron ’237 IPR petition, including Butt’s support for the knowledge of one of ordinary skill. Moreover, as we discuss below in the merits of the instant Petition, we have preliminarily determined that Petitioner’s showing of the data path and delay circuit configured to delay a signal through the data path are sufficiently demonstrated as taught or suggested in the obviousness challenge, unlike the anticipation showing in the Micron ’237 IPR. See Ex. 1041, 17–20. So, in other words, while Patent Owner’s argument that there was no error made by the Board in the Micron ’237 IPR may be meritorious, the operative issue is, however, that different obviousness-based arguments are being made here. In the Micron ’237 IPR the Board was limited to the arguments presented in that prior petition. See, e.g., Sirona Dental Sys. GmbH v. Institut Straumann AG, 892 F.3d 1349, 1356 (Fed. Cir. 2018) (“It would . . . not be proper for the Board to deviate from the grounds in the petition and raise its own obviousness theory . . . .”). Under these particular circumstances, the Board did not have the opportunity in the previous Micron ’237 IPR to evaluate the challenged claims based on obviousness over Hiraishi and Butt. With this, Patent Owner’s argument that there was no error in the Micron ’237 IPR is not relevant to the circumstances here, nor do we find that Petitioner was required to explain why the Board erred in its institution decision in the Micron ’237 IPR. And considering the Becton Dickinson factors for the second part of the inquiry under the Advanced Bionics framework10, factors” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner presents no proposed qualifications. See Prelim. Resp. 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). For purposes of this Decision and with the exception of the qualifier “at least” with respect to experience which renders the level of ordinary skill in the art ambiguous and may encompass levels beyond ordinary, we adopt the assessment offered by Petitioner, as it is consistent with the ’608 patent and the asserted prior art.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “the Board need not expressly construe any claim term because the prior art invalidates the claims under any plausible construction, in accordance with 37 C.F.R. §42.100(b),” but offers references to portions of the ’608 patent as examples of usage of certain claim terms. Pet. 7. Patent Owner does not present any proposed claim constructions. See Prelim. Resp. 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 16
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing at least one of claims 1–5 of the ’608 patent is unpatentable under 35 U.S.C. § 103. V. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review is hereby instituted as to claims 1–5 of the ’608 patent on the grounds set forth in the Petition; and” slip op. at 34
Claim constructionDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,268,608 - PTAB · Dec 11, 2023 · IPR2023-00977 · APJ St John Courtenay III · IPR · Institution
Instituted IPR of claims 1–20 on all petition grounds after finding a reasonable likelihood that the Casagrande, Russ, and Miller combination renders at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“12. Conclusion for Claim 1 under Ground 1 Based upon the present record, we find Petitioner has shown sufficiently that Casagrande, Russ, and Miller collectively teach or suggest all the limitations of independent claim 1. In addition, we find Petitioner has set forth sufficient reasons for combining these references with a reasonable expectation of success. Having considered the arguments and evidence presented by both the Petitioner and Patent Owner, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the subject matter” slip op. at 36
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“preliminary record. Petitioner presents detailed support for the similarities among the references. Pet. 13–14. And, more specifically, as to the rationale to combine Russ with Casagrande, Petitioner’s motivation that it would offer an improvement is supported by Dr. Jeffay’s testimony of a resulting financial value to a broadcaster (Ex. 1002 ¶ 137) by the modification, which we find is sufficient at this juncture. fully aware that hindsight bias often plagues determinations of obviousness, Graham, 383 U.S. at 36, we are also mindful that the Supreme Court guides that the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 401 (citation omitted). Here, at this juncture, we credit Dr. Jeffay’s testimony that Miller identifies techniques that offer advantages to Casagrande’s and Russ’s DVR system. See Ex. 1002 ¶¶ 103–105. Dr. Jeffay also testifies that the combination would have had predictable results, and a person of skill “would have been motivated to look to the teachings of Miller which describe the known process of using multiplexed signals alongside one or more tuners to deliver video content.” Id. ¶ 105. Additionally, as discussed above, we are not persuaded by Patent Owner’s argument that Miller teaches away, because we do not find that this argument applies— Petitioner does not rely upon Miller for teaching limitation 1[b], i.e., the storage of a plurality of video programs. 12. Conclusion for Claim 1 under Ground 1 Based upon the present record, we find Petitioner has shown sufficiently that Casagrande, Russ, and Miller collectively teach or suggest all the limitations of independent claim 1. In addition, we find Petitioner has set forth sufficient reasons for combining these references with a reasonable expectation of success.” slip op. at 35
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“proceeding if the challenge to the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 7 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). In evaluating matters under § 325(d), the Board uses the following two-part framework: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Id. at 8. We consider several non-exclusive factors as set forth in Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 Dickinson”), which “provide useful insight into how to apply the framework” under § 325(d). Advanced Bionics, 9. These non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson, 17–18 (formatting added). “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics, 10.” slip op. at 38
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Jeffay, Petitioner contends that an ordinarily skilled artisan for the ’122 patent “would have been someone with at least a bachelor of science in electrical engineering, computer engineering, computer science or a similar technology degree, as well as two years of relevant industry experience, including Internet networking architectures, digital programming delivery, and STBs.” Pet. 9 (citing Ex. 1002 ¶ 41). At this stage, Patent Owner “does not dispute the level of skill of a person of ordinary skill in the art . . . [as] identified in the Petition.” Prelim. Resp. 6. For purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art. On the present record, we are satisfied that this definition comports with the level of skill necessary to understand and implement the teachings of the ’122 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself can reflect appropriate level of ordinary skill in art).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,538,122
Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.