- PTAB · Jun 18, 2024 · IPR2024-00221 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on all challenged claims, 1–7, 15–23, and 25–30, on all asserted §103 obviousness grounds.
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 a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’720 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art at the time of the alleged invention (“POSITA”) would have had at least a bachelor’s degree in computer science, electrical engineering, or a related subject, and at least two years of experience working with databases, computer networks, and related web technologies. A more advanced degree can substitute for less work experience and vice versa. Pet. 17 (citing Ex. 1003 ¶¶ 57–61). Petitioner’s proposed level of skill in the art is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that the challenged claims’ terms “can be afforded their plain and ordinary meaning.” Pet. 17. As there is no dispute of any claim term at this time, we do not expressly construe any claim term, and will apply the ordinary and customary meaning consistent with 37 C.F.R. § 42.100(b).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Specifically, Petitioner contends that “Cochran endeavors to ‘provide an efficient and user-friendly method of searching computer databases’ using ‘a search system that efficiently displays information to users.’” Pet. 55 (citing Ex. 1005, 4:4–19). Petitioner asserts that Cochran acknowledges that “it may need to display more items than a pick box can display simultaneously, forcing a user to scroll through options.” Id. (citing Ex. 1006, 10:58–65). Petitioner argues that a “POSITA would have appreciated that certain lists in Cochran are extremely voluminous and would benefit from improved navigation methods.” Id. at 55–56 (citing Ex. 1006, Fig. 4e; Ex. 1003 ¶¶ 482–485). Petitioner contends that “Zellweger sought to remedy th[e] same problem.” Id. at 56. According to Petitioner, a “POSITA would have recognized that it is difficult for users to scroll through Cochran’s long pick box lists” and “would have looked to Zellweger to improve the usability of the pick boxes” by using Zellweger’s Alphabet or Content Lists instead of Cochran’s scroll bars when the number of entries exceeds what can be presented on a screen. Id. at 56–57 (citing Ex. 1003 ¶ 485). Petitioner contends that the combination is “nothing more than using one known method (Zellweger) to improve another known method (Cochran) according to the express teachings of Zellweger to yield predictable results.” Id. at 57. Petitioner further alleges that other methods for implementing pick boxes for use with “wide ranges” of terms were known in the art. Id. (citing Ex. 1006, 10:61–65). Petitioner contends that Cochran and Zellweger are analogous art because they are “directed to the same field (accessing information in databases), and address similar concepts (making information more easily accessible using graphical interfaces)” and teach several of the same concepts (e.g., GUIs to access databases) and are both implemented as computer software.” Id. (citing Ex. 1006, code (57), 1:14–20, 4:2–57; Ex. 1007, code (57), 1:35–40, 2:30–43; Ex. 1003 ¶¶ 480–481). Petitioner contends that a “POSITA would have appreciated that Cochran’s and Zellweger’s teachings were well-known and complementary to one another.” Id. Petitioner alleges that a “POSITA would have had a high expectation” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,760,720 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jun 18, 2024 · IPR2023-01225 · APJ Jason W Melvin · IPR · Final written decision
Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for patent owner
“F. LEVEL OF ORDINARY SKILL IN THE ART Petitioner submits that an ordinarily skilled artisan “would have had a bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims. Patent Owner asserts that the reexamination declaration correlated objective evidence with the “Predictive Curve Illumination” claims (PO Resp. 70–71), but cited portion of the declaration does not address that claim feature (see Ex. 2023, 728–34). Accordingly, Patent Owner has not established a nexus with the dependent claims. That the praised characteristics were found in the prior art is consistent with Patent Owner’s asserted evidence, which largely pertains to efforts to change U.S. regulations to permit the use of adaptive headlight technology. See Pet. Reply 28; Ex. 1053 ¶¶ 198–199. Thus, Patent Owner’s evidence does not support nonobviousness.” slip op. at 22
Patent outcomesUS 9,955,551 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,955,551 - Volkswagen Group Of America, Inc. / Porsche Cars North America, Inc. v. Yechezkal Evan SperoSome claims unpatentablePTAB · Jun 18, 2024 · IPR2023-00315 · APJ Jason W Melvin · IPR · Final written decision
Claims 24, 26, 28–32, 34, 36–40, 42, and 44–47 are unpatentable as obvious; claims 25, 27, 33, 35, 41, 43, and 48–55 were not shown unpatentable.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems.” Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Petitioner adds that such artisans “may work as part of a team, for example, with computer engineers to 3 Beam, U.S. Patent No. 6,144,158, issued Nov. 7, 2000. Ex. 1005, code (45). 4 English translation of Satonaka et al., Japan Patent Publication No. H7-101291, published Apr. 18, 1995. Ex. 1014, 0001, code (43). 5 Kobayashi, U.S. Patent No. 6,049,749, issued Apr. 11, 2000. Ex. 1008, code (45). 6 Karlsson, WIPO Patent Publication No. 98/54030, published December 3, 1998. Ex. 1010, code (43). 7 English translation of Nakamura et al., Japan Patent Publication No. H7-65603, published Mar. 10, 1995. Ex. 1013, 0001, code (43). 8 Gotou, U.S. Patent No. 5,588,733, issued Dec. 31, 1996. Ex. 1012, code (45). integrate/program controllers and various control inputs to affect control of a given light source.” Id. Patent Owner does not dispute that proposed level of skill (PO Resp. 9), and we adopt it here.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner notes that, during reexamination of the ’551 patent, the Office interpreted “electronic circuitry apparatus for the controlled powering of the LEDs” as a means-plus-function limitation and identified the corresponding structure as “logic control electronics unit 7.” Id. at 8 (citing Ex. 1002, 929–39; Ex. 1001, 25:34–52). Patent Owner asserts that “[n]o claim construction is necessary because Patent Owner’s arguments do not hinge on the outcome of an actual controversy about claim interpretation.” PO Resp. 9. As to the “electronic circuitry apparatus,” Patent Owner does not dispute that the claim language reads on the asserted prior art under any construction. Thus, we need not address the construction of that term. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“As to the advantages of Karlsson’s lamp-located sensor, nothing about that arrangement would have changed in the proposed combination. As described, Petitioner proposes using aspects of Nakamura’s processing in combination with Karlsson’s physical system. See Pet. 54–58. Thus, the combination preserves any advantages Karlsson obtains by locating a sensor with each illumination system. As to a change of perspective, the record does not support that Nakamura’s processing relies on a single, unchangeable perspective. Rather, Nakamura discloses identifying relevant image regions through reference markers such as “white lines of the lane” and adjustments such as “correction amount α” to accommodate the reference markers. Ex. 1013 ¶¶ 36–46; see Pet. Reply 58 (“Nakamura explains how to implement the coordinate mapping of the pixels received by a camera.”). Thus, Nakamura’s approach is already suitable to a changed perspective and Petitioner did not have to explain further details of the required adaption. See also Ex. 1052 ¶¶ 125 (“Wherever the camera is located on the vehicle, a simple calibration for camera location versus driver’s viewpoint would be conducted to carry on the image processing.”), 168 (noting that the same reasoning applies to the Karlsson–Nakamura combination as the Beam–Satonaka combination). Additionally, Patent Owner has not persuasively supported its assertion that the changed perspective—locating sensors at the headlamps rather than centered at the top of the windshield—would impair the system’s ability to detect other vehicles. See PO Resp. 57–59. Patent Owner’s expert could not testify as to the camera locations used to generate the images that form the basis for Patent Owner’s argument, as he was not present at the test that generated those images. Ex. 1053, 104:22–105:14, 106:16–107:6, 109:17–110:4. It is inapposite that “Nakamura does not contemplate LEDs and therefore does not control light in a similar fashion” as Patent Owner argues (PO Resp. 60), because Nakamura’s teachings relate to identifying regions in the illuminated field that should be dimmed. Ex. 1013 ¶ 45. Such a determination aligns with Karlsson’s own similar determination, and would be implemented by Karlsson’s system. See, e.g., Ex. 1010, 9:18–26. Having considered the full record, we find that skilled artisans would have” slip op. at 14
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for patent owner
“however, has not presented Mr. Stam’s declaration as a declaration in this case, instead relying on its expert, Dr. Turk, who “reviewed the objective evidence statements in the Stam declaration.” PO Resp. 68 (citing Ex. 2006 ¶¶ 215–216). Dr. Turk, however, was not able to recall the meaning of multiple terms he used in his declaration (Ex. 1053, 124:5–135:18) and asserted that he determined that ADB technology falls within the claims by looking at the Stam declaration, without independently verifying statements in the Stam declaration or reviewing the documents upon which those statements were based (id. at 135:19–137:16). Dr. Turk’s declaration addressing secondary considerations is not credible as to the substance of the asserted secondary considerations, and Patent Owner’s asserted secondary considerations are not persuasive for that reason alone. Additionally, Petitioner asserts that Patent Owner has not shown any evidence that is “the direct result of the unique characteristics of the claimed invention.” Pet. Reply 25 (quoting Fox Factory, Inc. v. Sram, LLC, 944 F.3d 1366, 1373–74 (Fed. Cir. 2019) (internal quotations omitted)). In particular, Petitioner asserts that all the elements of the claimed invention were known in the prior art, and thus that Patent Owner cannot show a nexus between any long-felt need or industry praise and the challenged claims. Id. at 25–26. As to independent claims 24 and 32, Patent Owner does not assert any “unique characteristics that are novel and nonobvious over the asserted art.” See PO Resp. 70–71. Patent Owner asserts that claim 40 includes “adapting light emission to provide at least two dark zones with ‘light in-between’” and that the Stam declaration correlates that characteristic with the objective evidence. Id. The Stam declaration addresses claim language reciting illumination “that preserves a first level of illumination illuminating past the other vehicle while preventing glare to a driver of the other vehicle” and asserts that an article discussing that a commercial product’s “[i]ndividually controlled LEDs also provide two or more dark zones with ‘light in-between,’ allowing continuous use of a vehicle’s high-beams to maximize visibility and provide a safer driving experience.” Ex. 2023, 734 (Stam declaration ¶ 117) (quoting Ex. 2023, 182) (emphasis omitted). Patent Owner does not explain and we do not understand the connection between the claim language recited in the declaration and that of claim 40. But even accepting that the reexamination exhibit shows industry praise for a system with claim 40’s feature, Patent Owner has not shown that the feature was novel. As discussed above, we conclude that Karlsson discloses that aspect of claim 40 without modification. See supra at 16 (§ II.B.5). Accordingly, even viewing Patent Owner’s evidence as credible and appropriate, we conclude that it would not establish the required nexus for claim 40. To be clear, Patent Owner’s asserted evidence would not establish nexus for any aspect of the independent claims, because each element is found in the prior art and the only elements for which Petitioner asserts a combination of prior-art teachings—those relating to image coordinates—are not those that Patent Owner relies on for a unique characteristic of the claimed invention. Patent Owner asserts further that industry praise was directed at the “Predictive Curve Illumination feature” recited by dependent claims that require the ability to “accommodate the upcoming road curvature” by adapting the light. PO Resp. 8, 70–71. Patent Owner relies on a report of a new lighting system used by BMW that states, “[t]he benefit of a glare-free function is not only to shadow out other cars but also to provide visibility for upcoming curves and dangerous situations; there is a clear safety gain by illuminating this curve in front of the driver.” Ex. 2023, 727 (quoting Ex. 2023, 177) (emphasis omitted). That statement does not itself establish a nexus to the “Predictive Curve Illumination” claims.” slip op. at 22
Patent outcomesUS 9,955,551 mixedClaim construction§ 103 obviousnessPatents in suitUS 9,955,551 - Keysight Technologies, Inc. v. Centripetal Networks, LLCSome claims unpatentablePTAB · Jun 3, 2024 · IPR2023-00448 · APJ Steven M Amundson · IPR · Final written decision
Claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable under § 103; claims 6, 14, 22, 30, and 33 were not shown unpatentable.
RulingsFinal written decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In the Institution Decision, we instituted review based on all challenged claims and all challenges included in the Petition. Paper 7 (“Inst. Dec.”). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1–5, 7–13, 15–21, 23–29, 31, and 32 are unpatentable but has not shown by a preponderance of the evidence that claims 6, 14, 22, 30, and 33 are unpatentable. See 35 U.S.C. § 316(e) (2018).” slip op. at 2
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed
“Conclusion About Obviousness for Claim 1 For the reasons discussed above, the combined disclosures in Law and” slip op. at 86
Patent outcomesUS 11,012,474 mixed§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,012,474 - PTAB · May 20, 2024 · IPR2024-00114 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–8 on all asserted grounds, finding a reasonable likelihood that at least one claim would have been obvious over DiPerna964 and Strack.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine below that Fintiv factors 1–5 do not favor discretionary denial. Thus, we do not reach the issue of whether the merits are compelling. CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022- 01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential) (Board must first address Fintiv factors 1–5, and should engage the compelling merits question only if that analysis favors discretionary denial) (“CommScope”). 7. Balancing the Fintiv Factors Weighing against exercising our discretion to deny institution is factor 3 involving the parties’ limited investment and lack of substantive orders in the District Court litigation. Factor 4 concerning the limited overlap of the issues in the two cases also weighs against discretionary denial. Only factor 5, that Petitioner and the defendant in the District Court litigation are the same party, weighs in favor of discretionary denial. Factor 1 concerning the absence of a stay in the District Court litigation, and factor 2 concerning the close proximity between the start of trial in the District Court litigation and the estimated deadline for the final written decision, are neutral on the facts of this case. We therefore determine that the balance of factors 1–5 weighs against discretionary denial. Accordingly, we do not consider the issue of whether compelling merits have been shown under factor 6. See CommScope, Paper 23 at 4–5.2” slip op. at 13
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner
“Pet. 9 (citing Ex. 1006, 23) (emphasis added). From this passage, we understand the “safety” switch to be “separate” from the panic button, not a part of it. This understanding is reinforced by claim 7 which depends from claim 1 and recites that the mobile device “further compris[es] a safety switch,” meaning it is a separate element from the panic button. Ex. 1001, 9:3–4. Thus, moving the safety switch into position readies the panic button, which is not the same as the panic button readying itself to perform functions in claims 1–8 of the ’404 patent. Patent Owner does not sufficiently address this issue in its assertions. See Prelim. Resp. 5–7. Patent Owner’s reliance on disclosures elsewhere in the ’404 patent is likewise not persuasive. Prelim. Resp. 5–6. For example, the ’353 application mentions “ready” in relation to using a self-defense mechanism such as pepper spray, which has not been shown to be related to the panic button. Ex. 1006, 5, 9–10. Although Patent Owner relies on the ’353 application’s description of voice activation using a codeword, voice activation does not ready the panic button for activation to perform functions, but actually activates the panic button to perform those functions. Prelim. Resp. 6 (citing Ex. 1006, 17). Petitioner thus met its burden here to demonstrate that claims 1–8 of the ’404 patent lack written description support for a panic button adapted to “ready itself” to perform the recited functions because the limitation is not present in the ’353 application to which the ’404 patent claims priority. Pet. 8–10. The burden of production thus shifted to Patent Owner to demonstrate that the ’353 application has written description support for this limitation, which it has not done on this record. Prelim. Resp. 5–7.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 1–8 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the ground set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–8 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and” slip op. at 31
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner has shown sufficiently that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18. DiPerna964 and Strack are directed to similar mobile devices for use in security and emergency situations. Id. at 16–17. Petitioner demonstrates sufficiently that a POSITA would have regarded Strack’s arming and timer technique as an improvement that would have been useful with DiPerna964’s mobile device (at least in some circumstances) to provide the user with additional time to evaluate whether triggering the 911 call is warranted. Id. at 17–18. This amounts to the use of a known technique to improve similar devices in the same way, which is a recognized rationale for combining prior art references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 401, 417 (2007). Accordingly, on this record, Petitioner has presented a reasonable likelihood that a POSITA would have combined DiPerna964 and Strack with a reasonable expectation of success. Pet. 16–18.” slip op. at 22
Claim construction§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - PTAB · May 20, 2024 · IPR2024-00113 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 9–15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We do not agree with Patent Owner’s argument that Petitioner wrongly considered the parties’ investment in the parallel litigation as of when the Petition was filed as opposed to when the institution decision is made. Prelim. Resp. 21. Petitioner indicated that “investment in the parallel litigation will have remained low at the time of institution,” thus indicating the proper timeframe for consideration of this factor. Pet. 69. Although the parties have expended some resources in the District Court litigation, the evidence shows that the District Court has not issued any substantive orders, a Markman hearing has not yet been conducted, and expert reports have not been exchanged. Id. (citing Ex. 1035). Accordingly, this factor weighs against exercising our discretion to deny institution. Fintiv at 10; NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential, designated May 7, 2019) (determining that “the advanced state of the district court proceeding is an additional factor that weighs in favor of denying the Petition,” where the district court proceeding was “nearing its final stages, with expert discovery ending” soon).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“IV. CONCLUSION In light of the foregoing, based on the current record and at this stage of the proceeding, we are persuaded that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions that at least one of claims 9–15 of the ’404 patent would have been obvious under 35 U.S.C. § 103 based on the grounds set forth in the Petition. Accordingly, we institute trial for all challenged claims on all grounds asserted by Petitioner. See SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018); 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim”). Our factual findings, conclusions of law, and determinations at this stage of the proceeding are preliminary, and based on the evidentiary record developed thus far. At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or to the construction of any claim term. V. ORDER For the foregoing reasons, it is ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 9–15 of the ’404 patent is hereby instituted on all challenges to patentability set forth in the Petition; and FURTHER ORDERED that pursuant to 35 U.S.C. § 314(c) and 37 C.F.R. § 42.4, notice is hereby given of the institution of a trial and that the trial will commence on the entry date of this decision.” slip op. at 46
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends as follows: A person of ordinary skill in the art (“POSITA”) at the time of the ’404 patent’s priority date would have had at least a Bachelor’s of Science Degree (or equivalent) in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, and about 1-2 years of experience working with telematics systems (e.g. familiarity with wireless communications, geolocation systems, and human-computer interfaces). A greater amount of education in an academic area emphasizing electrical engineering, computer engineering, computer science, or a related technical field, would compensate for fewer years of work experience, and more years of work experience would compensate for less education. This is the appropriate level of skill, whether the claims are entitled to priority as of January 2005 or January 2019. Pet. 7–8 (citing Ex. 1002 ¶¶ 14–16). At this stage of the proceeding, Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we will use Petitioner’s proposed level for purposes of this Decision.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededPlain and ordinary meaningOther
“Only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Petitioner contends that “no express constructions of the claims are necessary to assess whether the prior art reads on the [challenged claims]” and that “the claims should be given their plain and ordinary meaning.” Pet. 8. Patent Owner states that “at this stage in the proceeding, Patent Owner will apply the ordinary and customary meaning to the ’404 patent’s claim terms.” Prelim. Resp. 4. As Petitioner and Patent Owner do not dispute the meaning of any claim term at this time, we decline to expressly construe any claim term, and instead apply the ordinary and customary meanings consistent with 37 C.F.R. § 42.100(b). We address claim interpretation to the extent necessary in our obviousness analysis below.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,265,404 - PTAB · Mar 13, 2024 · IPR2023-01353 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–20 on all Petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–20 of the ’343 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons stated in our Decision on Institution in the Keysight IPR. See IPR2023- 00446, Paper 9.” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8.” slip op. at 4
NonePatents in suitUS 10,567,343 - PTAB · Feb 22, 2024 · IPR2023-01329 · APJ Kevin F Turner · IPR · Institution
The Board instituted review of claims 1–27 on all petition grounds and granted Palo Alto Networks’ motion to join the Keysight IPR, with no new grounds added.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. INSTITUTION OF INTER PARTES REVIEW We instituted inter partes review in the Keysight IPR on all challenged claims and all asserted grounds of unpatentability. IPR2023- 00445, Paper 10. Petitioner’s Petition challenges the same claims and asserts the same grounds of unpatentability as those on which we instituted the Keysight IPR, relying on substantially the same testimonial evidence. See Mot. 2 (“[the instant Petition] is substantively identical to Keysight’s IPR.”). As noted above, Patent Owner does not refute the same. Paper 5, 1. Because the issues presented in the instant Petition are identical to those in the Keysight IPR, we determine for the same reasons that there is a reasonable likelihood that Petitioner would prevail in showing that at least one of claims 1–27 of the ’266 Patent is unpatentable under the grounds of the Petition. Therefore, we institute inter partes review for the same reasons” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. See Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013); Patent Trial and Appeal Board, Consolidated Trial Practice Guide, 76 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf. Petitioner’s Motion addresses each of these considerations. Mot. 1–8. According to Petitioner, its “Petition presents the unpatentability of the same claims of the same patent on the same grounds as the Keysight Petition.” Id. at 5. Petitioner also argues that “Patent Owner will not be required to provide any additional analysis or arguments beyond what it will already provide in responding to the Keysight Petition,” and does not unduly burden or negatively impact the trial schedule. Id. at 6–7. Further, Petitioner agrees to take an “understudy” role and Petitioner “will assume the primary role only if Keysight ceases to participate in the Keysight IPR.” Id. at 7–8. Thus, according to Petitioner, Patent Owner would not suffer prejudice if the two proceedings are joined. Id. at 8. Patent Owner has not disputed the above contentions by Petitioner and does not point to any particular prejudice relating to joining the two proceedings. In light of these considerations, Petitioner has shown that joinder to the Keysight IPR is appropriate in this case. Therefore, we grant Petitioner’s Motion for Joinder.” slip op. at 4
NonePatents in suitUS 10,785,266 - Zebra Technologies Corporation v. Lone Star SCM Systems, Ltd.All claims unpatentablePTAB · Feb 22, 2024 · IPR2022-01374 · APJ Aaron W Moore · IPR · Final written decision
Claims 1, 3–10, 15, 16, and 18 are unpatentable as obvious under § 103 over Garber and Werb, with Andersen added for claims 6, 7, and 18.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that a person having ordinary skill in the art at the time of the alleged invention “would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field” and “significant experience with detection devices, like RFID and metal detectors.” Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner does not address Petitioner’s proposal or offer a different definition, and we determine that Petitioner’s formulation is consistent with the qualifications a person would have needed to understand and implement the teachings of the ’711 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that the prior art itself may reflect an appropriate level of skill in the art). We thus apply Petitioner’s description of the person of ordinary skill in the art. B.” slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. See Williamson v. Citrix Online, LLC, 2 The District Court similarly concluded that “sensing subsystem” “is not a means- plus-function term subject to § 112 ¶ 6.” See Ex. 1015, 4. 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome . . . if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). We conclude that Petitioner has not overcome the presumption against applying § 112, ¶ 6. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’” (Pet. 6)—are conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. See Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”). Accordingly, we maintain our determination that § 112 ¶ 6 does not apply to “a sensing subsystem configured to provide a signal having a signature representing a presence of a radio frequency identification (RFID) object.”” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownNo construction neededMixed
“We do not adopt either of the proposed constructions because we conclude they add features from embodiments but fail to identify the required “clear indication in the intrinsic record that the patentee intended” to limit the claims in the manner proposed. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913 (Fed. Cir. 2004). Instead, we conclude that “sensing subsystem” is “a component configured to detect a signal representing an object,” as proposed by Petitioner, but without “self-contained.” This is functionally the same as Patent Owner’s proposed construction with the conversion concept omitted, and also consistent with the District Court’s construction, which was “components configured to detect and convert a signal representing an object.” See Ex. 1015, 4.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“We do not agree with Petitioner’s argument that “multiscan, coherent signal processing” does not require multiple scans. As noted above, Petitioner and Dr. Sharony acknowledge that “multiscan, coherent signal processing” is not a term of art and should be given its plain and ordinary meaning, and we find that the plain and ordinary meaning of “multiscan” requires multiple scans because the term is a combination of the prefix “multi,” which means more than one, with “scan.” Interpreting “multiscan” to cover only a single scan would read the prefix “multi” out of the claim term. Similarly, construing “multiscan” to require multiple signals, but not multiple scans, would read “scan” out of the term. Our understanding is consistent with the ’711 patent, which states as follows: The integrated mode of operation may employ multiscan, coherent signal processing of diverse multiple inputs to achieve significantly higher detection sensitivities thereby allowing more precise object location and identification. Ex. 1001, 18:18–22 (emphasis added). This sentence indicates that “multiscan, coherent signal processing” processes “diverse multiple inputs” to achieve higher 4 Here and elsewhere we substitute italics for bold emphasis used by the parties. detection sensitivities. However, it does not redefine the ordinary meaning of the term “multiscan” so that it would cover scanning only once rather than scanning multiple times, or cover receiving multiple inputs but not multiple scans.” slip op. at 14
Patent outcomesUS 7,557,711 unpatentableClaim construction§ 103 obviousnesscites GrahamPatents in suitUS 7,557,711 - PTAB · Feb 16, 2024 · IPR2023-01321 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1–19 and 37–58 based on the asserted grounds and granted Porsche’s motion to join IPR2023-00335, subject to participation restrictions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“A. INSTITUTION OF INTER PARTES REVIEW Petitioner represents that the “Petition is essentially a copy of the petition filed in” the VW IPR and that the evidence and arguments “are substantively identical to the evidence and arguments supporting the VW Petition.” Mot. 1, 4. Our independent review of the Petition and the VW IPR petition confirms Petitioner’s representations, and that the petitions in the two proceedings are substantially the same. Further, although Petitioner relies on a different expert declarant, Petitioner submits that the two declarations are “substantively identical.” Id. at 3. Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“We determine that Petitioner has met its burden of showing that joinder is appropriate because, as set forth above, the Petition is substantially identical to the petition in the VW IPR, contains the same grounds based on the same evidence, and relies on a substantively identical declaration. Petitioner also represents that joinder will not impact the VW IPR schedule. See Mot. 4. Additionally, Petitioner represents that it is willing to accept a limited, “understudy role” to Volkswagen (the original petitioner in the VW IPR), taking over only in the event VW no longer participates. See id. at 5; id. at 5 n.3. Specifically, Petitioner represents that in its understudy role, it agrees that the following conditions will apply: (a) Petitioner will not make any substantive filings and shall be bound by the filings of VW, unless a filing concerns termination and settlement, or issues solely involving Petitioner; (b) Petitioner will not present any argument or make any presentation at the oral hearing unless an issue solely involves Petitioner, or when addressing motions that do not affect VW; (c) Petitioner will not seek to cross-examine or defend the cross-examination of any witness, unless the topic of cross-examination concerns issues solely involving Petitioner, within the time permitted by VW alone and with VW’s agreement; (d) Petitioner will not seek discovery from Patent Owner, unless issues arise that are unique to, and only applicable to, Petitioner; and (e) Petitioner will not rely on expert testimony beyond that submitted by VW unless and until VW is terminated as party to the proceeding prior to any necessary depositions. See id. at 5–6. Patent Owner has not filed an opposition to Petitioner’s Motion. Thus, Petitioner’s Motion stands unopposed. Under these circumstances, we agree with Petitioner that joinder is appropriate and will not unduly impact the ongoing trial in the VW IPR. We limit Petitioner’s participation in the VW IPR proceeding as follows: (1) VW alone is” slip op. at 8
- PTAB / AIA Trials › Discretionary denialNot reached
“Having already considered the merits of those challenges and the evidence in the VW IPR, and having determined that the threshold for institution of inter partes review has been met, we determine that this Petition also establishes a reasonable likelihood that Petitioner will prevail with respect to at least one claim. Additionally, we determine that Patent Owner’s arguments for discretionary denial (see Prelim. Resp. 59–69) are not persuasive.10 Therefore, for the same reasons stated in our Decision to Institute in the VW IPR, we institute inter partes review in this proceeding on the grounds presented in the Petition.” slip op. at 7
Discretionary denialPatents in suitUS 10,894,503
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.