- Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Sep 4, 2024 · IPR2024-00457 · APJ Brian D Range · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood that any claim was unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“The parties agreed that resolution of this time bar issue would be resolved in the same manner as in IPR2024-00456. In particular, the parties stipulated: The parties stipulate with respect to the privity time bar issue that the facts and issues in IPR2024-00457 are the same as in IPR2024-00456, so that any decision the Board reaches resolving the privity time bar issue in IPR2024-00456 will apply and resolve the privity time bar issue in IPR2024-00457 in the same manner. Notice of Stipulation, Paper 14, 1. In the decision on institution for IPR2024-00456, the Board determined that “Lenovo is not a privity of Microsoft [in this context] and the Petition is not time-barred under § 315(b).” IPR2024-00456, Paper 22, 10 (July 31, 2024). Thus, pursuant to the parties’ stipulation, the instant petition is also not time-barred.” slip op. at 16
- Prior constructionPrior construction adoptedDecided for petitioner
“For this decision, we again construe “plurality of views of a plurality of visual representations of computer content” as “referring to a plurality of ways of organizing visual representations of computer content.” We again note that this limitation is distinct from merely providing a plurality of ways of displaying content (by, for example, changing display orientation, color, resolution, etc.). Petitioner assumes this construction for the Petition, and Patent Owner assumes this construction for Patent Owner’s Preliminary Response. Moreover, the construction is well supported by the ’715 patent’s claims and specification for reasons similar to those stated in the prior decision cited by Petitioner. IPR2021-00786, Paper 6, 13–16 (construing this term for the ’715 patent). For this decision, we do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties.7 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” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“Below, we explain that we deny institution based on the merits: Petitioner has not shown, with respect to at least one of the challenged claims, a reasonable likelihood of prevailing at trial. In the interest of judicial efficiency, we therefore do not need to consider discretionary denial. Cf. Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (explaining that the Board is not required to reach issues unnecessary to “resolve the controversy”); see also, e.g., Aylo Freesites Ltd. v. Dish Techs. LLC, IPR 2024-00512, Paper 12, 12, n. 3 (declining to reach the 35 U.S.C. § 325(d) issues when denying based on 35 U.S.C. § 314(a)).” slip op. at 17
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA), would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices. Ex-1003, ¶ 21. More education could substitute for experience and vice versa. Id. Pet. 15. Patent Owner does not dispute the level of ordinary skill in the art. See Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in the prior art and the ’715 patent. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,880,715 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationNo claims unpatentablePTAB · Aug 30, 2024 · IPR2023-00529 · APJ Brian D Range · IPR · Final written decision
Claims 1–8, 11–16, and 21 were not proven unpatentable over Mauer and Waylett because the asserted combinations did not teach key claim limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL Petitioner defines the person of ordinary skill in the art as follows: As of February 2006, a person of ordinary skill in the art (“POSITA”) would have been a person with a degree in 1 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), amended 35 U.S.C. § 103. Because the challenged claims of the ’414 patent have an effective filing date before the effective date of the applicable AIA amendments, we refer to the pre-AIA version of 35 U.S.C. § 103 throughout this Decision. 2 Mauer et al., U.S. Patent No. 7,395,085 B1, issued July 1, 2008 (Ex. 1005, “Mauer”). 3 Waylett et al., U.S. Patent No. 8,184,603 B2, issued May 22, 2012 (Ex. 1006, “Waylett”). computer science, electrical or computer engineering, physics, or a similar discipline . . . [and] would also have at least two years of relevant experience including, for example, work related to telecommunications networks. Pet. 3 (citing Ex. 1003 ¶ 54). The institution decision adopted Petitioner’s definition of a person having ordinary skill in the art. Dec. on Inst. 11–12. Patent Owner applied this definition for its response. Resp. 19. Petitioner’s undisputed definition of a person of ordinary skill in the art is reasonable and consistent with the prior art and ’414 patent specification. Based on the record before us, we adopt Petitioner’s undisputed proposal. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner does not submit constructions for any claim terms. According to Petitioner, “[t]he Board construes claims under the same standard used in civil actions in federal district court. The district court for the related litigation has not yet construed the claim terms.” Pet. 7. The parties provided briefing regarding construction of “distributed mobile architecture (DMA).” Resp. 19–34; Pet. Reply 1–3; PO Sur-reply 11–14. But we do not need to construe “distributed mobile architecture (DMA)” to resolve this inter partes review. We thus do not construe this claim term. We also do not discern a need to construe explicitly any other claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The 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 meaning of ’414 patent claims to the extent necessary to resolve the issues we address below. Id.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“a) Combination of Mauer and Waylett In support of both Ground 1 and Ground 2, Petitioner argues that a person of ordinary skill in the art would have been motivated to combine Mauer’s and Waylett’s disclosures, “using Waylett’s Network-in-a-box 224 in each of Mauer’s WWAN 14 and WLAN 12, resulting in at least two DMA systems.” Pet. 11–13. Asserting that “Mauer teaches providing sufficient network coverage by use of different kinds of networks, network interfaces, and protocols,” Petitioner contends that a person of ordinary skill in the art would have recognized that “Waylett discloses an inexpensive way to implement the same networks used in Mauer’s WWAN 14 and WLAN 12.” Id. Citing similarities in Mauer’s and Waylett’s systems, Petitioner argues that “a POSITA would have been able to modify Mauer’s WWAN 14 and WLAN 12 networks so that each network uses Waylett’s NIB 224.” Id. at 14. According to Petitioner, the combination would have included a number of beneficial features from Mauer. Id. at 14–15. Petitioner further advances three reasons that a person of ordinary skill would have had to combine the references’ teaching. Id. at 15–16. First, asserting that Waylett discloses cost benefits and Mauer discloses “an improved method and system for notifying mobile stations,” Petitioner contends the “references each provide reasoning” to combine their disclosures. Id. at 15. Second, Petitioner argues that a person of ordinary skill in the art would have been motivated to “improve Mauer’s distributed wireless network system by consolidating it into a single box, making it compact in design allowing for faster deployment.” Id. at 16. “Third, Waylett’s NIB would help mitigate the shared concern of Mauer—that is, reaching a mobile station as it roams or moves outside of the service or coverage area.” Id.” slip op. at 24
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Petitioner does not establish that Mauer sends calls to voicemail based on the two determinations claim 1 recites. Resp. 55–56. In particular, as we explain above, claim 1 requires making use of the DPR after first determining the second mobile subscriber is not located within a first wireless coverage area based on HLR and VLR information and also determining that the second mobile subscriber is not located within a second wireless coverage area based on certain CLR information. The Petition, at best, attempts to establish that Mauer directs to voicemail when a “communication session cannot be established over the first or second wireless network.” Pet. 37. But a general determination that a “communication session cannot be established” does not teach or suggest claim 1’s specific requirements that first, the DPR is utilized in the specific circumstance that the second mobile subscriber is not located within the first wireless coverage area (with this determination being made based on HLR and VLR information), and second, that the DPR is also not located within the second wireless coverage area (with this determination being made based on CLR information). See PO Sur-Reply 8–9; Ex. 2001 ¶¶ 111–113. For the reasons above, Petitioner does not establish by a preponderance of the evidence that the combined art teaches or suggests the final “when” recitation of claim 1.” slip op. at 29
Patent outcomesUS 7,653,414 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,653,414 - Sony Interactive Entertainment Inc. / Sony Group Corporation v. Resonant Systems, Inc.Institution deniedPTAB · Aug 26, 2024 · IPR2024-00568 · APJ Karl D Easthom · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–8, 11, or 17 were unpatentable over the asserted obviousness combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“The record supports Patent Owner. Under a means plus function analysis, which the parties agree applies, Petitioner relies on Houston’s microprocessor as the structure that corresponds to the recited “control component.” Pet. 36 (“Houston teaches that vibration controller 623 is a microprocessor thereby satisfying the structural requirement of this means plus-function limitation.”). microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 22
- Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Decided for patent owner
“The specification, therefore, supports Patent Owner. The specification clearly links this algorithmic structure to the recited function, “controlling supply of power from the power supply.” As Patent Owner shows, Petitioner agreed in the Sony litigation that the corresponding structure includes “provide a corresponding output to the power supply so that the power supply provides a corresponding output to the driving component and equivalents thereof.” Prelim. Resp. 13 (quoting Ex. 2002, 9).” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“microprocessor, limitation 1.f further requires algorithmic structure (processed by the microprocessor of the recited “control component”) to include “1) computing a digital output value corresponding to user-selected amplitude of oscillation and outputting the value to the claimed power supply so that the power supply outputs an appropriate current amplitude to the coil.” Supra Section III.C (emphasis added). In other words, as Patent Owner argues, to satisfy limitation 1.f, the “prior art [at least] would need to have this microprocessor perform the algorithmic step of ‘provid[ing] a corresponding ‘output to the power supply.’” Prelim. Resp. 18. Patent Owner also argues that “[t]he Petition fails to show that this [algorithmic step] is disclosed or rendered obvious by the combination of Houston and Goldenberg.” Prelim. Resp. 18. The record supports Patent Owner. Petitioner does not contend, let alone show, that the combination of Houston and Goldenberg teaches outputting any value to a power supply as limitation 1.f requires according to the claim construction Patent Owner argues and we adopt. See Pet. 35–44; supra Section III.C. It follows that the Petition fails to show a reasonable likelihood of success of prevailing with respect to claim 1.” slip op. at 23
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,369,081 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Jul 9, 2024 · IPR2024-00120 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 11, and 26–34 on all asserted grounds, finding a reasonable likelihood of prevailing on the § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“2 While the ’230 patent is currently involved in a parallel district-court case, Petitioner argues that “[i]nstitution is appropriate under Fintiv . . . .” Pet. 157. Petitioner also states that “if this proceeding is instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Id. Patent Owner does not challenge Petitioner’s argument. Accordingly, and in view of Petitioner’s stipulation, it is not necessary to reach Petitioner’s discretionary denial arguments. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to section II.A)).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree (B.S.) in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 7 (citing Ex. 1004 ¶¶ 5–17, 79–84). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’230 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,191,230 - PTAB · Jul 9, 2024 · IPR2024-00119 · APJ Brian D Range · IPR · Institution
The Board instituted review of claims 1–17 on all asserted grounds, finding a reasonable likelihood of success on at least one claim despite finding Wong was not shown to be prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“unless the information presented in the petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–17 of the ’760 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1007 ¶¶ 36–42). Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 8. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’760 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“Prelim. Resp. 9 (citing Ex. 1001, 3:15–17, 7:49–51, 8:6–8, 9:10–12). We agree with Patent Owner that “slidably” in claim 1 requires that some continuous surface-to-surface contact must occur. Patent Owner further argues, however, that the figures, such as Figure 12A of the ’760 Patent, provide minimal clearance between the remote/latch release. Prelim. Resp. 10–11. These figures merely depict embodiments of an optical fiber connector after final assembly. See, e.g., Ex. 1001, 4:51–57 (stating that Figure 12A depicts “one embodiment” and that Figure 12B is a top view of the Figure 12A connector). We do not discern anything about the word “slidably” or claim 1 that requires minimal clearance after assembly. We also do not discern anything about claim 1 that requires that, for example, the inner portion of the groove slide against the lower portion of the latch release. Rather, the inner portion of the groove must be above to “receive” the lower portion of the latch release. How does it receive it? It does so “slidably.” The recitation is met so long as the inner portion of the groove is configured such that it can receive the lower portion of the latch release via any sliding. Neither the inner portion nor the lower portion, in particular, must have sliding surface-to-surface contact. In a similar way, neither the outer portion of the groove nor the narrower portion of the latch release must have sliding surface-to-surface contact. Thus, rather than importing a minimal clearance requirement into claim 1’s “slidably” recitations and rather than requiring that specific components must slide (when the claim does not state as much), we understand, for example, “the inner portion of the groove being configured to slidably receive the lower portion of the latch release” to mean that the inner portion of the groove has structure capable of receiving the lower portion of the latch release via a sliding motion. Such sliding could include any degree of surface-to-surface contact between parts; for example, the bottom surface of the latch release could slide along the upper surface of the groove. Similarly, “the outer portion of the groove being configured to slidably receive the narrower portion of the latch release” means that the outer portion of the groove has structure capable of receiving the narrower portion of the latch release via a sliding motion.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“connectors. Pet. 14–16. Petitioner argues that Raven teaches a connector that includes two ferrules and that Kuffel teaches an MPO connector that contains MT ferrules. Id. at 15–17 (citing, e.g., Ex. 1003, Fig. 1; Ex. 1004, 5:16–27; Ex. 1007 ¶¶ 150–151). Petitioner argues that a person having ordinary skill in the art would have understood that Kuffel’s MPO connectors (which contain MT ferrules) would be used to increase density within data transmission networks. Id. at 16 (citing, e.g., Ex. 1004, 4:8–14; Ex. 1007 ¶ 147; Ex. 1015; Ex. 1025; Ex. 1027). Petitioner argues that a person having ordinary skill in the art would have modified Raven’s two ferrule connector to use an MT ferrule (as Kuffel teaches) and argues that such a modification would improve Raven’s device in the same way as described in Kuffel. Id. at 17–18 (citing Ex. 1007 ¶¶ 152–154). Petitioner argues that there would have been a reasonable expectation of success in making this modification. Id. at 19 (citing Ex. 1007 ¶ 155). Petitioner argues that the modification (1) is supported by the disclosures of Kuffel and Raven, (2) represents a simple substitution, and (3) would enable Raven to incorporate a multi-fiber connector. Id. at 20–23 (citing, e.g., Ex. 1007 ¶¶ 159–169). Based on the evidence presented, Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Raven and Kuffel with a reasonable expectation of success.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,415,760 - PTAB · Jul 9, 2024 · IPR2024-00118 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR of claims 1–28 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Nhep and Watanabe.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition 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.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’413 patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“1 Petitioner states that “if [this proceeding is] instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Pet. 113. In view of Petitioner’s stipulation, we do not discretionarily deny institution. Katherine” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“(1) at least a bachelor’s degree in mechanical engineering, electrical engineering, physics, or a related field and three years of experience in fiber optics and fiber optic connectors; (2) a master’s degree in mechanical engineering, electrical engineering, physics, or a related field and at least one year of experience in fiber optics and fiber optic connectors; or (3) industry experience (at least three years) designing fiber optic connectors in lieu of a formal degree. Pet. 8–9 (citing Ex. 1003 ¶¶ 44–50). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’413 patent specification and the prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We interpret the challenged claims 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), including construing 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. 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. 8 The present record does not include any objective evidence of nonobviousness. Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). “The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner states that it “does not believe any claim terms require specific construction and thus should receive their plain and ordinary meaning, in the context of the ’413 patent specification, under the Phillips standard.” Pet. 9 (citing Ex. 1003 ¶¶ 91–93). For purposes of this Decision, no claim terms require express construction.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 11,340,413 - PTAB · Jul 9, 2024 · IPR2024-00121 · APJ Barbara A Parvis · IPR · Institution
The Board instituted inter partes review of claims 1–53 on all petitioned grounds, finding a reasonable likelihood that Lee and Raven render claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition 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.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’701 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“Petitioner argues that “the prior art provides a motivation” to make Petitioner’s modifications. Id. at 20. In particular, Petitioner relies on Raven’s teaching (discussed above in Section III.D.2) that “it is not uncommon for the installers to get confused between transmitting and receiving cables.” Ex. 1006, 1:13–25. Raven continues that this can make it “necessary for the installer to replace the existing cable or remove the connecting head from the fibres and effectively remanufacture the cable on site, which is very cumbersome and time consuming.” Id. at 1:32–35. Raven describes that its addresses the problem by disclosing a “fibre optic cable assembly and a method for changing the polarity of first and second optical fibres in a fibre optic cable assembly.” Id. at 2:17–19. Petitioner argues a person of ordinary skill in the art would have been motivated to make the modifications to “Lee’s connector to change polarity easily.” Pet. 19 (citing Ex. 1003 ¶¶ 193–200); see also id. at 27 (citing Ex. 1003 ¶ 221) (arguing the proposed modifications would have allowed “the polarity of Lee’s connector to be altered easily without the need to remanufacture the cable.”). Petitioner also argues the following: [T]his modification involves applying a known technique (Raven’s removable latch configuration) to a similar device (Lee’s connector) in the same way (providing latch couplings on exterior walls of a connector housing to receive a removable latch). A POSITA would have understood that there are a finite number of ways of making Lee’s latch arm 28 removably coupled to the exterior walls of its connector housing.” slip op. at 20
- Skill levelSkill level petitioner adoptedOther
“had “at least an undergraduate degree in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 4 (citing Ex. 1003 ¶¶ 117–128). Petitioner adds that “[a]dditional relevant experience can compensate for a lack of relevant education, and vice versa.” Id. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’701 patent specification and the prior art.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that the Petition “affords all terms their ordinary and customary meaning.” Pet. 4 (citing Ex. 1003 ¶¶ 129–131). For purposes of this Decision, no claim terms require express construction.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 11,181,701 - PTAB · Jul 9, 2024 · IPR2024-00117 · APJ Elizabeth M Roesel · IPR · Institution
Instituted IPR on claims 1–13 on all petitioned grounds; Petitioner showed a reasonable likelihood of prevailing on at least one claim, including anticipation of claim 1 by Nguyen.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the petition 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.” For the reasons below, we determine that Petitioner establishes a reasonable likelihood that it would prevail with respect to at least one claim, and we institute an inter partes review as to all challenged claims of the ’836 patent.” slip op. at 2
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication not establishedNot shown unpatentable
“A reference qualifies as a printed publication only if it was publicly accessible before the effective filing date of the challenged patent. 35 U.S.C. § 102(a)(1); M & K Holdings, Inc. v. Samsung Electronics Co., Ltd., 985 F.3d 1376, 1379 (Fed. Cir. 2021). Public accessibility “has been called the touch-stone” in determining whether a reference qualifies as a printed publication. M & K Holdings, 985 F.3d at 1379 (quoting Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765, 772 (Fed. Cir. 2018)). “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it.” Id. (quotes and citations omitted).” slip op. at 8
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“2. Independent Claim 1 a. Preamble Petitioner contends that Nguyen discloses the claim 1 preamble, which recites “an adapter for mating with optical fiber connectors.” Ex. 1001, 18:12. Pet. 32–33 (citing Ex. 1005 ¶¶ 26–30, Figs. 1, 2). We find that Petitioner’s contention for the claim 1 preamble is adequate for purposes of institution.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“2. Reasons to Combine Petitioner contends that it would have been obvious to modify Nguyen’s adapter in two ways. Pet. 54. First, Petitioner asserts it would have been obvious to include “optical-fiber connectors that employ handles configured to remotely release connectors from the adapter” by replacing Nguyen’s connectors with Lee’s connectors. Pet. 54–56 (citing Ex. 1003 ¶¶ 289–295). Second, Petitioner asserts it would have been obvious to include “a transverse wall that includes slots halfway between two ends of the adapter and sleeve holders that employ sockets to mate with cylindrically-shaped ferrules” by replacing Nguyen’s wall with Lee’s sleeve holders. Pet. 54, 56 (citing Ex. 1003 ¶¶ 296–302). Petitioner provides several reasons for the first modification, including a desire for convenience, tightly packed fiber optic ferrules, ease of maintenance, and scalability. Pet. 54 (citing Ex. 1003 ¶¶ 289–290). According to Petitioner, these goals would be served because “Lee’s handle allows a user to disengage the latch arm further from the adapter” whereas “[t]he latch arms of Nguyen require a user to be closer to the adapter.” Id. (citing Ex. 1003 ¶ 289). Petitioner also provides reasons for the second modification, asserting that “Lee’s sleeve holders are easy to maintain because they are removable, able to snap into place, and coordinate with dust caps to maintain cleanliness, as opposed to Nguyen’s immobile wall.” Pet. 56 (citing Ex. 1003 ¶ 297). According to Petitioner, “a POSITA would have been motivated to modify Nguyen’s adapter to incorporate Lee’s sleeve holders and slots to provide a system that is easier to maintain.” Id. (citing Ex. 1003 ¶¶ 298–299). We find that Petitioner’s asserted rationale for modifying Nguyen in view of Lee is adequate for purposes of institution.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,333,836 - Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00454 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that the Reavey–Chandhri combination met limitation 1h.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 10 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 11–15. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 20
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315
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.