- PTAB · Jun 13, 2024 · IPR2024-00240 · APJ Deborah Katz · IPR · Institution
The Board instituted inter partes review of claims 1–42 on all asserted grounds, finding a reasonable likelihood of success and declining discretionary denial under §§ 314(a) and 325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The Director may not authorize an inter partes review “unless the Director determines 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(a). We determine whether to institute a post grant review on behalf of the Director. See 37 C.F.R. § 42.4(a). 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. Upon considering the Petition, the Preliminary Response, and the evidence of record, we determine that Petitioner has demonstrated there is a reasonable likelihood that the petition would prevail in showing that at least one challenged is unpatentable. Accordingly, we institute inter partes review of all challenged claims on all asserted grounds. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018); 37 C.F.R. § 42.108(a).” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“patient is MSI-H after enrollment in a study in which pembrolizumab is to be administered is not within the scope of the claim step “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab.” At this point in the proceeding, though, we do not interpret the claim step as meaning anything other than the treatment of colorectal cancer patients after they have been determined to be microsatellite instability high or DNA mismatch repair deficient. Although the term “in response to” in claim 1 requires that treatment of the patient occur after the determination that the colorectal cancer is MSI-H, we do not interpret the term to mean that other patients are not treated or that the recruitment and enrollment of patients for a clinical trial has any bearing on the steps recited in claim 1. We interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id. Patent Owner has not directed us to evidence that one of ordinary skill in the art would have understood treating a patient “in response to” the determination that the patient has a condition excludes treatment of other patients without the condition, although it does require that treatment of the patient occur after the determination that the colorectal cancer is MSI-H. The language of claim 1 refers only to patients that are determined to have microsatellite instability high or DNA mismatch repair deficient colorectal cancer, not to other patients. (See Ex. 1001, 25:40–50.) At this point in the proceeding, the record does not indicate that the treatment of patients determined not to be MSI-H is be factored into whether the teaching of treating patients determined to be MSI-H anticipates the method of claim 1. At this point in the proceeding, we construe the “in response to” limitation of claim 1 to mean that pembrolizumab is administered to a patient after the patient has been determined to be microsatellite instability high or DNA mismatch repair deficient, regardless of whether pembrolizumab is also administered to other patients.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“H Study Record teaches treating colorectal cancer patients after they were determined to be microsatellite instability high or DNA mismatch repair deficient with pembrolizumab. (See MSI-H Study Record, Ex, 1005, 4 (Arms and Interventions); see also id., 2 (Study Identification), 3 (Study Description), 4–5 (Outcome Measures), 5–6 (Eligibility); see Neugut Decl., Ex. 1003, ¶¶ 58–62.) At this point in the proceeding, Petitioner has sufficiently shown that there is a reasonable likelihood of a causal relationship in the MSI-H Study Record between treatment of colorectal cancer patients and the determination of their MSI status — all colorectal cancer patients determined to be microsatellite instability high or DNA mismatch repair deficient were treated. Whether or not other patients were treated or enrolled in the study does not detract from this teaching.” slip op. at 16
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Furthermore, to the extent the MSI-H Study Record does not disclose the limitation of “in response to determining that the colorectal cancer is microsatellite instability high or DNA mismatch repair deficient, treating the patient with a therapeutically effective amount of pembrolizumab,” the record before us supports this limitation being rendered obvious by Pernot and the MSI-H Study Record. Specifically, because Pernot teaches that colorectal cancer patients are good candidates for immunotherapy, the evidence of the current record shows that one of ordinary skill in the art would have had a reason to use to PD-1 inhibitors to treat colorectal cancers. (See Ex. 1006, 3741.) Additionally, the focus in the MSI-H Study Record on a clinical study treating colorectal cancer patients who had been determined to be MSI-H with prembrolizumab indicates that it would have been obvious to test for this condition before treatment. The additional references discussed by Petitioner contribute further to a reasonable likelihood that Petitioner will prevail. For example, Libson reports the successful treatment of a colorectal cancer patient having MSI-H status with a PD- 1 inhibitor (see Ex. 1057, 463-64) and Champiat discusses evaluating the clinical activity of PD-1 agents in DNA mismatch repair, such as MSI+, colorectal cancer (see Ex. 1032, e27817-5). (See Pet. 44.) Thus, based on the entire record before us, Petitioner presents a reasonable likelihood that the method of claim 1 would have been considered obvious by one of ordinary skill in the art.” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,591,393 - PTAB · May 29, 2024 · IPR2024-00063 · APJ William V Saindon · IPR · Institution
The Board instituted IPR on claims 1–6, 8–15, and 17–19 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Prikowitsch or Sar-Shalom.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“16–23; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR” (Ex. 1055, 2), we do not discretionarily deny institution under Fintiv. As to Patent Owner’s allegation that Petitioner should not be able to file a stipulation after the Preliminary Response (Prelim. Resp. 22–23), we determine that Petitioner’s filing of its Sotera stipulation at the time it did is proper. NXP USA, Inc. v. Impinj, Inc., IPR2021-01556, Paper 13 (PTAB Sept. 7, 2022) (precedential) (holding the Board may only consider stipulations offered before a decision on institution).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having reviewed the Petition and Preliminary Response, we determine that Petitioner has established a reasonable likelihood in showing that the subject matter of claim 1 of the ’227 patent is unpatentable over Prikowitsch.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“In summary, we determine that adoption of either party’s proposed construction does not provide a meaningful difference at this time; both appear to cover the same idea. Indeed, given that the claims already state that the call completion application detects an incomplete call, receives a call completion action, and triggers execution of the call completion action, we see no reason to construe “call completion application” to require anything beyond what is already in the claims. On this record, we see no support in the claims or specification to hold that a “call completion application” can be read as operating without reliance on a network in some way.2 Instead, after the call completion application becomes aware of an incomplete call, the application receives a choice from a user and triggers execution of that choice, and in accordance with the ’227 patent 2 To the extent Patent Owner’s proposed construction is seeking to preclude a network in the performance of the call completion application, then we would not agree with that construction. The call completion application is always dependent on the infrastructure of a communication network; as should be clear from our analysis above, the ’227 patent is focused on independence from the call completion services provided by the called party’s network. Notwithstanding the choice of call completion action being independent of the call completion services provided by the called party’s network, the call completion action still must rely on the network to provide the infrastructure to carry out certain actions. specification, it is that choice that is not premised on a limitation imposed by the called party’s network. Ex. 1001, 1:54–62 (“a system that complete[s] an incomplete call . . . independent of a preconfigured call completion service on the called party’s network”) (emphasis added), 2:39–43 (“the system . . . enables transmission of a voice message by a calling party to a called party when a network component or a called party device is not configured to offer a call completion option to the calling party to leave a voice message”). We do not explicitly provide a claim construction of any claim limitation in this Decision at this time because the issue of whether Petitioner has shown a reasonable likelihood can be resolved without explicitly construing the claim. 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)). However, our analysis places the parties on notice of the potential scope of the claims.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and Internet-related communications technologies, or the equivalent, with additional education substituting for experience and vice versa. Pet. 7. Patent Owner agrees with Petitioner’s proposed level of skill at this time. Prelim. Resp. 4. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the level of disclosure provided in the ’227 patent and the prior art cited.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,185,227 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 22, 2024 · IPR2024-00105 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1–13 and 16 on all petitioned grounds after finding a reasonable likelihood that claim 1 is obvious over Fells.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“According to our precedent, “if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under [Becton, Dickinson] factors (e) and (f).” Advanced Bionics, Paper 6 at 10; see also Keysight Techs., Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 14 (PTAB Aug. 24, 2023) (vacating a Board decision denying institution where the examiner considered references but never provided any discussion, analysis, or other findings, and the petition provided a sufficient argument on the merits, which the examiner misapprehended or overlooked). Here, in evaluating Becton, Dickinson factor (c), we determine that the Examiner’s reasoning with respect to Fells and Cook is not well developed and neither reference was the basis for a rejection. We also determine, for reasons we discuss more fully below, that InductEV has shown that the Examiner materially erred by overlooking at least the teachings of Fell as applied to claim 1 (Becton, Dickinson factor (e)), and that the Petition presents additional evidence and facts, including testimony by Dr. Allen, that warrant reconsideration of Fells (Becton, Dickinson factor (f)). See infra Section IV.C. Thus, we decline to deny institution discretionarily under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“9. Conclusion as to claim 1. For the above reasons, we determine that InductEV has shown, sufficiently at this stage, that Fells discloses or teaches all the limitations of claim 1, and that a person of ordinary skill in the art would have had reason to combine the features described in Fells in the manner recited in claim 1. We therefore determine that InductEV is reasonably likely to prevail in showing that claim 1 is unpatentable under § 103(a) as obvious over Fells.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party argues that we should construe any particular claim terms. Pet. 6 (citing Ex. 1003 ¶¶ 62–63); Prelim. Resp. 5–6. We agree that, for this decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,027,184 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · May 20, 2024 · IPR2024-00140 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR on claims 1, 4–10, 12–16, 18, and 19 on all petitioned grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review 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); see also 37 C.F.R. § 42.108(c). Applying that standard, we institute an inter partes review of all the challenged claims of the ’654 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“First, although InductEV disagrees that the word antenna would exclude coils found within a transformer-like structure, InductEV does not appear to dispute WiTricity’s proposed IEEE definition of antenna as “a device that radiates and/or receives radio waves.” See Prelim. Reply 2–3. We preliminary adopt that construction. But we agree with InductEV that nothing in this construction would exclude a coil found within a transformerlike structure, so long as it either transmits or receives radio waves. We also note that, although WiTricity relies on the generation of near-field flux lines into free space as a way to distinguish an antenna from a transformer, WiTricity does not point to any testimonial or other evidence that a transformer coil does not generate near-field flux lines into free space. See, e.g., Prelim. Resp. 8–16; Ex. 2001, 20–37. Second, we agree with InductEV that the preliminary evidence does not suggest (and WiTricity does not explicitly argue) that the terms transmitting antenna or receiving antenna depart from the ordinary and customary meanings of those terms. Pet. 2. The ’654 patent does refer to a “coupling-mode region” consisting of the area around antennas 114 and 118 of Figure 1 in which “near-field coupling may occur.” Ex. 1001, 2:38–40; see supra Section II.A. But this is the region in which “efficient energy transfer occurs by coupling a large portion of the energy in the near-field of the transmitting antenna to a receiving antenna rather than propagating most of the energy in an electromagnetic wave to the far field”—not a defining characteristic of either the transmitting or receiving antenna. See Ex. 1001, 2:31–38. Thus, for this decision, we preliminarily adopt InductEV’s proposed construction of transmitting antenna as “an antenna that transmits energy” and the proposed construction of receiving antenna as “an antenna that receives energy.” Prelim. Reply 1. This appears to be consistent with the ordinary and customary meaning of the terms and their usage in the ’654 patent. See, e.g., Ex. 1001, 2:26–40. As this is a preliminary construction solely for this decision, the parties may continue to offer evidence and arguments as to these or other claim terms at trial. We do not need to construe any of the other terms explicitly for this decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under § 102, a petitioner must locate each and every element in a claim, arranged as recited in the claim, in a single prior art reference. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008). The limitations may be present in the reference “either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). In making this determination, we consider the reference “together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (citing In re Samour, 571 F.2d 559, 562 (CCPA 1978)).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Alternatively, if WiTricity is correct that alignment based on the degree of coupling is not explicitly applicable to the “parked” embodiment, the preliminary evidence suggests that a person of ordinary skill in the art would have had reason to substitute such alignment for alignment based on the output of the sensors that Ross discloses, such as optical sensors, and that this would have predictably led to aligning the two coils regardless of whether the vehicle is parked temporarily on a roadway or parked in a loading/unloading zone. See Ex. 1003 ¶¶ 246–248 (opining that a person of ordinary skill would have understood that one may obtain the “optimum lateral position” of the vehicle coil by sensing the degree of coupling “[i]nstead of” using sensors (quoting Ex. 1007, 13:21))); KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”); Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380 (Fed. Cir. 2023) (“[I]f there’s a known technique to address a known problem using ‘prior art elements according to their established functions,’ then there is a motivation to combine.” (citing Intel Corp. v. Qualcomm Inc., 21 F.4th 784, 799–800 (Fed. Cir. 2021))). We also find persuasive, on the present record, InductEV’s argument that claim 13 does not require control based on the degree of inductive coupling while the receiving antenna is being guided into the recited “first alignment position.” See Prelim. Reply 5. Whereas limitation 13[b] requires such control after the receiving antenna is already in the “first alignment position” (e.g., during fine alignment while Ross’s vehicle is parked in the loading/unloading zone), there is no such requirement in limitation 13[a] while the receiving antenna is being moved to the “first alignment position” (e.g., while Ross’s vehicle leaves the electrified roadway and parks in the loading/unloading zone).” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,466,654 - PTAB · Apr 26, 2024 · IPR2024-00064 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–14 and 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)Institution denied fintivDenied
“The Director’s Memo provides that “[c]onsistent with Sotera Wireless, Inc.,[7] the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner has filed a stipulation which stipulates that “[i]f the PTAB institutes the pending IPR in IPR2024-00064 . . ., then Samsung will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the . . . district court Case 2:22-cv-00462-JRG-RSP.” Ex. 1082, 1.8 We determine that the language of this stipulation sufficiently comports with the language of the Director’s Memo, consistent with Sotera Wireless, Inc. See Director’s Memo 3. We accordingly decline to” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and touch interface technologies, or the equivalent, with additional education substituting for experience and vice versa.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner construes the terms “interface regions,” “gesture,” “interface definition module,” “detection module,” and “action management module.” Pet. 8–10. Patent Owner agrees with some of these constructions and asserts that resolution of others are unnecessary at this stage. Prelim. Resp. 4–6. Because none of these terms are in dispute, none of these terms or any other terms require construction at this stage. 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))). The parties are free to present any proposed construction of any claim term in subsequent briefing.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage, we disagree with Patent Owner. As we understand Lee’041, the defined interface regions do not remain static, as Patent Owner argues. Rather, we agree with Petitioner at this stage that Slide-to-Lock feature 18 dynamically appears on the display “where a part of region 16 was previously.” Pet. 27. As can be seen from Figures 2A and 2B of Lee’041, reproduced above, Hold to Talk region 16 covers a bottom portion of the screen (shown with Petitioner’s pink annotation). When Hold to Talk region 16 in Figure 2A is pressed and held by the user’s finger, Slide-to- Lock feature 18 appears (in Figure 2B) in a part of the same area of the screen as Hold to Talk 16 region was displayed. See Ex. 1014, 3:33–36; Figs. 2A–2B. Comparing these two figures, the region 16 for Hold to Talk in Figure 2A shrinks in size in Figure 2B to accommodate Slide-to-Lock feature 18. Thus, Patent Owner’s assertion that “the function associated with each of the defined regions remains static” overlooks that the function of part of the Hold to Talk region 16 is changed to be a Slide-to-Lock feature 18. See Prelim. Resp. 8.” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,552,030 - PTAB · Apr 12, 2024 · IPR2024-00056 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, and 9 on all four asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Taken holistically, we find Patent Owner’s arguments for discretionary denial unavailing. Although there is no stay in the District Court, this factor weighs only marginally in favor of exercising our discretion to deny institution. The trial court date is set some months earlier than our projected statutory deadline, but the trial date may change, and the parties provide no statistics on median time to trial in the relevant district. Thus, the trial date weighs only slightly in favor of exercising our discretion to deny institution. See Director’s Memo (“[T]he proximity to trial should not alone outweigh all of those other factors.”). Further, although there is an overlap in claims asserted in the district court and before the Board, Patent Owner acknowledges that this proceeding “would not cover any of the references that Petitioner[] raised in the District Court Litigation,” so the lack of overlap in issues weighs against exercising discretion. See Prelim. Resp. 19. We also agree with Petitioner that there has been little activity in the District Court litigation, such as the issuance of any substantive orders. See Pet. 74; Fintiv, Paper 11 at 9–10. In sum, although there is no stay and an early trial date, we find that the uncertainty of that trial date, the current lack of progress of the District Court litigation, and the lack of overlapping issues weigh against exercising our discretion. See Director’s Memo 2 (“[T]he precedential import of Fintiv is limited to facts of that case.”). We therefore need not reach Petitioner’s assertion of compelling merits. See Pet. 74; CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (Vidal Feb. 27, 2023) (precedential) (“The Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.”).” slip op. at 8
- 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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’949 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that A person of ordinary skill in the art at the relevant time (“POSITA”) would have had a bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and two-three years of experience with multimedia and Internet-related communications technologies, or the equivalent, with additional education substituting for experience and vice versa. Pet. 7 (citing Ex. 1002 ¶¶ 28–30). Patent Owner agrees with Petitioner’s proposed level of skill in the art at this stage. Prelim. Resp. 3. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’949 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner proposes constructions for the terms “multimodal message,” “service information,” “client application,” and “pointer.” Pet. 8–13. Patent Owner does not dispute any of these constructions. Prelim. Resp. 3–4. Patent Owner also asserts that Petitioner appears to treat the preamble of claim 1 as limiting and agrees that it is limiting. Id. at 4. Because none of these terms are in dispute, none of these terms require construction at this stage, and we need not determine whether the preamble of claim 1 is limiting. 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))). Petitioner also asserts that the term “interactive multimodal message” has its plain meaning, but Petitioner does not explain what that plain meaning is. Pet. 8–9. Patent Owner agrees with Petitioner that this term should have its plain meaning but also provides a construction for “interactive.” Prelim. Resp. 3; see also id. at 7. We address the meaning of this term in the context of the parties’ merits arguments below.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,929,949 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01208 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR of claims 1–18 on all asserted grounds after finding a reasonable likelihood that the Cook and Bennett combination renders the claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two years of industry or equivalent research experience in the field of wireless energy transfer.” Pet. 6 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37–41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Neither party proposes an express construction for any claim terms. Pet. 7. We determine that no claim terms require express construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,912,687 - Inductev, Inc. v. Witricity CorporationInstitutedPTAB · Feb 20, 2024 · IPR2023-01182 · APJ Robert J Weinschenk · IPR · Institution
The Board instituted IPR on claims 16 and 17 for all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the following two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of [the] first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 5
- Skill levelSkill level petitioner adoptedOther
“B. Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art would have had “at least a bachelor’s degree in electrical engineering (or equivalent) and at least two to three years of industry of equivalent research experience in the field of wireless energy transfer.” Pet. 7–8 (citing Ex. 1003 ¶¶ 37–41). Petitioner’s description of the level of ordinary skill in the art is supported by the testimony of Petitioner’s declarant, Dr. Mark Allen. Ex. 1003 ¶¶ 37– 41. Patent Owner does not dispute Petitioner’s description at this stage of the proceeding. We adopt Petitioner’s description for purposes of this Decision.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review proceeding, a patent claim is construed using the same standard used in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of the claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless “the information presented in the petition . . . 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). Further, when instituting an inter partes review, we “will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a). Here, Petitioner demonstrates a reasonable likelihood of prevailing in showing that at least one of the challenged claims is unpatentable. Thus, we institute an inter partes review of the challenged claims on all the grounds of unpatentability in the Petition.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 8,461,719 - PTAB · Feb 1, 2024 · IPR2023-01298 · APJ Devon Zastrow Newman · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that Chell anticipates at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). The Board determines whether to institute a trial on behalf of the Director. 37 C.F.R. § 42.4(a). A decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition.” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have possessed a strong understanding in the use and development of genetics and genomics approaches for detecting or monitoring human diseases, such as spatial detection of a target analyte (e.g., mRNA or DNA) in a tissue, and would typically have a Ph.D. in a relevant field (e.g., molecular biology, genetics, and bioinformatics) with two years of experience. Pet. 14 (citing Ex. 1002 ¶¶ 24–25). For the purposes of its Preliminary Response, Patent Owner does not provide its own proposed level of skill. Prelim. Resp. 10. For purposes of this Decision, we apply Petitioner’s unchallenged definition as it is consistent with the cited prior art and disclosure of the ’689 patent.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“a) contacting the tissue sample with a plurality of nucleic acid probes, wherein each of the nucleic acid probes comprise a target binding domain that binds to the at least one target analyte, wherein the tissue sample [has been] is treated to facilitate binding of the nucleic acid probes to the target analyte b/c) collecting the nucleic acid probes, or portions thereof, bound to the at least one target analyte in a first/second location of the tissue sample under conditions that release the nucleic acid probes, or portions thereof, from the first/second location of the tissue sample d/e) performing an extension reaction that incorporates at least one nucleic acid sequence that identifies the first/second location of the tissue sample into each of the nucleic acid probes, or portions thereof, collected in step (b), thereby forming a first plurality of extension products that comprise the nucleic acid probes, or portions thereof, collected in step (b) and the at least one nucleic acid sequence that identifies the first/second location of the tissue sample Ex. 1001, 145:51–147:11 (emphasis added). Thus, according to claim 1, the “nucleic acid probe” must 1) comprise a target binding domain that binds to the at least one target analyte, 2) be bound to the at least one target analyte; 3) be released in whole or as a portion, and 4) have a location-identifying nucleic acid sequence incorporated into it through an extension reaction. Steps a), b), and c) occur in relation to the target analyte, while steps d) and e) occur after the probe is” slip op. at 21
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We further interpret “collecting the nucleic acid probes” to mean “releasing all or a portion of the nucleic acid probe bound to the at least one target analyte through application of a force followed by retrieval of the released probe or portion of the probe.” The question then becomes whether So-465, which teaches replication of a probe that was bound and then at least partially released to make genomic amplicons, followed by collection of those genomic amplicons, anticipates collection of probes as recited in claims 1 and 16. On this record, we do not see sufficient evidence that the genomic amplicons disclosed in So-456 that Petitioner identifies as “captured” were ever “bound to the analyte” in part or in whole as required by the claim language, but rather were amplified in situ from the probe or partial probe that was released. Ex. 1005 ¶¶ 181–183. In particular, the process of So-456 differs from the ’689 patent claims in that the extension reaction to incorporate the tissue-identifying nucleic acid sequence in So-465 occurs after the identifier nucleotide is cleaved from the tissue sample. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Petitioner has not demonstrated that So-456 teaches this claim limitation or otherwise demonstrates that this limitation would have been inherent in the disclosure of So-456 for claims 1 and 16. For these reasons, on this record we determine that Petitioner has not shown a reasonable likelihood that So-456 anticipates either of independent claims 1 or 16.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,377,689 - Meta Platforms, Inc. v. Eight KHZ, LLCInstitutedPTAB · Jan 9, 2024 · IPR2023-01005 · APJ Justin T Arbes · IPR · Institution
The Board instituted IPR of claims 9–14 and 16–20 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Director’s Memo 3. With our authorization, Petitioner filed a stipulation which stipulates that [i]f the PTAB institutes the pending IPR in IPR2023-01005 challenging the patentability of claims 9–14 and 16–20 of the ’628 patent, then [Petitioner, Meta Platforms Technologies, LLC, and Twisted Pixel Games, LLC] will not pursue as to the challenged claims any ground raised or that could have been reasonably raised in the IPR in the above-captioned district court litigation (No. 6:22-cv-00575-ADA).” slip op. at 11
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“[A]t the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13, 21 (PTAB Dec. 20, 2019) (precedential) (“Hulu”). 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.” Id. at 13. slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“We disagree based on the current record. Schröder “must be considered for everything that it teaches, not simply the . . . preferred embodiment” that involves only adjusting the HRTFs to maintain the sound’s direction when there are small, relatively frequent movements and performing cross-talk filtering in a particular way. In re Applied Materials, Inc., 692 F.3d 1289, 1298 (Fed. Cir. 2012); In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012) (“A reference may be read for all that it teaches, including uses beyond its primary purpose.”). Petitioner’s position is that (1) Billinghurst teaches spatializing sound for the avatar of a remote collaborator shown on the display, as well as changing the spatialized sound in response to the wearer’s head movements, but does not explicitly describe how it does so, and, therefore, (2) a person of ordinary skill in the art would have looked to a reference like Schröder for details. See Pet. 21–22, 24, 34–36, 45–48. Petitioner relies on Schröder solely for its teachings regarding HRTF processing, not, for example, its description of a particular Schröder processes voice using HRTFs and adjusts HRTFs in response to head movements to maintain direction some of the time (i.e., when there are small, relatively frequent movements); Schröder simply takes a different action in certain other circumstances (i.e., it resets the direction when there is a larger, relatively less frequent movement). See Ex. 1012, pg. 4, l. 12–pg. 6, l. 3; Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1002 (Fed. Cir. 2016) (“combinations of prior art that sometimes meet the claim elements are sufficient to show obviousness”).” slip op. at 33
- Skill levelSkill level petitioner adoptedDecided for petitioner
“C. Level of Ordinary Skill in the Art Petitioner argues that at the time of the ’628 patent (June 2014), a person of ordinary skill in the art would have had “at least a bachelor’s degree in computer science or engineering with a focus on audio signal processing and sound localization, with at least two years of relevant experience,” where “[a]dditional experience could substitute for less education, and additional education could likewise substitute for less experience.” Pet. 19 (citing Ex. 1003 ¶¶ 32–34). Patent Owner applies Petitioner’s definition of the level of ordinary skill in the art for purposes of its Preliminary Response. Prelim. Resp. 5. Based on the record presented, including our review of the ’628 patent and the types of problems and solutions described in the ’628 patent and cited prior art, we agree with Petitioner’s proposed definition of the level of ordinary skill in the art and apply it for purposes of this Decision, except that we remove the term experience.” slip op. at 14
§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,674,628
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.