- Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00807 · APJ Karl D Easthom · IPR · Institution
The Board instituted review of claims 2 and 3 on all petitioned grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner states that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00807 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity grounds raised (or any grounds that could have been raised) in IPR2024-00807 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows that “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review as to all remaining challenged claims, claims 2 and 3, and the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s expert declarant contends that a person of ordinary skill in the art (POSITA), would have had a degree in mechanical engineering, electrical engineering, physics, or a related technical field, and at least 2–3 years of experience related to the design or development of systems incorporating linear actuators; additional years of experience could substitute for the advanced-level degree. Ex. 1003 ¶ 30. Patent Owner offers “a similar level of ordinary skill in the art.” Prelim. Resp. 4. Based on a review of the record, we adopt Petitioner’s proposed level of ordinary skill in the art because it is consistent with the evidence of record, including the asserted prior art and ’337 patent specification.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“For purposes of this proceeding, the parties agree that independent claim 2 includes means-plus-function limitations under 35 U.S.C. § 112 ¶ 6.9 Pet. 2–6; Prelim. Resp. 7–14. An element in a claim for a combination may be expressed as a means . . . for performing a specified function without the 9 As indicated above, statutory citations are to the pre-AIA version of 35 U.S.C. § 112. See supra note 1. recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 35 U.S.C. § 112 ¶ 6. In particular, the parties agree that the “driving component” and “control component” requirements of independent claim 2 are means-plus-function limitations. Pet. 2–6; Prelim. Resp. 7–14. Construing a means-plus-function limitation under 35 U.S.C. § 112 ¶ 6 involves two steps: 1) identifying the claimed function and 2) identifying in the specification the corresponding structure that performs the claimed function. Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir. 2003); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1119 (Fed. Cir. 2002).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,860,337 - Apple Inc. v. Resonant Systems, Inc.InstitutedPTAB · Oct 15, 2024 · IPR2024-00806 · APJ Norman H Beamer · IPR · Institution
The Board instituted IPR on claims 1–8, 14–17, 19, and 20, finding a reasonable likelihood of unpatentability over the asserted §103 combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Office (“USPTO”) issued a Memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation” (“Memorandum”),8 which states, among other things, that “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.” Memorandum 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). In a September 18, 2024 letter, Petitioner has stated that “Apple hereby stipulates that if the PTAB authorizes petitioner to enter this stipulation into evidence in IPR2024-00806 and institutes the proceeding, Apple will not pursue in the above-captioned litigation the same invalidity 8 The Memorandum is available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. grounds raised (or any grounds that could have been raised) in IPR2024-00806 for any claim of the patent.” Ex. 1048 (citing Sotera, IPR2020-01019, Paper 12). Applying the guidance provided in the Memorandum, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
- Skill levelSkill level petitioner adoptedDecided for petitioner
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,941,830 - Microsoft Corporation / HP Inc. et al. v. Litl LLCAdverse judgmentPTAB · Oct 10, 2024 · IPR2024-00456 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–9, 15–22, and 24–27.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding,” and states that “disclaimer of a claim such that the party has no remaining claim in the trial” will be construed as a request for adverse judgment. Under these circumstances, we grant Patent Owner’s motion for adverse judgment. ORDER It is: ORDERED that Patent Owner’s Motion for adverse judgment (Paper 28) is GRANTED, and FURTHER ORDERED that judgment is entered against Patent Owner with respect to claims 1–9, 15–22, and 24–27 of the ’888 patent.” slip op. at 2
NonePatents in suitUS 8,612,888 - HP Inc. / Dell Technologies Inc. et al. v. Litl LLCAdverse judgmentPTAB · Oct 1, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims: 1, 3, 4, 7-10, 13, 14, 16-18, and 22.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding,” and states that “disclaimer of a claim such that the party has no remaining claim in the trial” will be construed as a request for adverse judgment. Under these circumstances, we grant Patent Owner’s motion for adverse judgment.” slip op. at 2
NonePatents in suitUS 8,624,844 - US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing grantedPTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing
The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2
NonePatents in suitUS 11,061,190 - Microsoft Corporation / Affirmed Networks, Inc. v. Lemko CorporationAll claims unpatentablePTAB · Sep 10, 2024 · IPR2023-00531 · APJ Scott Raevsky · IPR · Final written decision
Claims 1, 3–9, and 20 are unpatentable as anticipated by Flore under § 102.
RulingsFinal written decision- BurdenFwd all claims unpatentableUnpatentable
“Petitioner bears the burden to demonstrate unpatentability, and that burden never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation inquiry takes into account the literal teachings of the prior art reference and inferences the ordinarily skilled person would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner defines the person of ordinary skill in the art as follows: “As of 2008, a person of ordinary skill in the art [POSA or POSITA] . . . of the ’988 patent’s field would have had a bachelor’s degree in electrical engineering, computer engineering or an equivalent, as well as two years of industry experience related to telecommunications networks.” Pet. 3 (citing Ex. 1003 ¶ 56). Petitioner also asserts that “[a]dditional graduate education . . . could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. Patent Owner “applies this definition of a POSITA for its analysis.” PO Resp. 18. Based on the complete record now before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and the ’988 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 7
- Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner
“Patent Owner also does not persuasively explain why we should disregard the ’988 patent’s exception to peer-to-peer connections, that is, “in not all cases will the DMA servers 406 be able to participate as peers in an IP network.” Id. at 9:12–13. Patent Owner’s assertions that when “DMA servers are able to connect as peers with an existing DMA network, they do so,” and that the “new DMA server is just the initial node in a new peer-to-peer network,” do not find support in the specification. See PO Resp. 23–24 (citing Ex. 1001, 9:9–24, Fig. 6). Instead, Patent Owner cites a portion of the specification that explains “in not all cases will the DMA servers 406 be able to participate as peers,” such as in rural areas, in which case “DMA gateways . . . enable DMA servers to communicate with one another when one or more of the DMA serves cannot participate directly in the IP network.” Ex. 1001, 9:12–21. Nothing in this passage suggests that a DMA server not acting as a peer would merely be a temporary condition and that once able to connect as a peer, it would do so. Such reasoning is gloss added by Patent Owner and Patent Owner’s expert, Dr. Cooklev, whose testimony on this point mirrors the Response. Ex. 2021 ¶ 69. We do not find Dr. Cooklev’s testimony credible on this point because the testimony does not align with the ’988 patent specification.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“Our reviewing court “has repeatedly cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1346–47 (Fed. Cir. 2015). “Absent disclaimer or lexicography, the plain meaning of the claim controls.” Toshiba Corp. v. Imation Corp., 681 F.3d 1358, 1369 (Fed. Cir. 2012). There is no disclaimer or lexicography in the specification that requires us to limit the claims as Patent Owner wishes. We agree with Petitioner that the passages upon which Patent Owner relies use non-limiting, exemplary language. See Reply 6. For example, Patent Owner relies heavily on Figure 4 and its accompanying description, but Figure 4 “illustrates a non-limiting, exemplary embodiment.” PO Resp. 19–25; Ex. 1001, 6:31. Thus, Figure 4’s references to a “peer-to-peer connection,” “switch and route call[]” functionality, that “controlling logic can be distributed,” and “self-healing and redundant” wireless coverage, for example, do not limit the claim. See Ex. 1001, 6:48, 52, 64, 66 (emphasis added).” slip op. at 11
Patent outcomesUS 7,855,988 unpatentableClaim construction§ 102 anticipationPatents in suitUS 7,855,988 - 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 - Philip Morris Products, S.A. v. Rai Strategic Holdings, Inc.All claims unpatentablePTAB · Jul 31, 2024 · PGR2020-00071 · APJ Jeffrey W Abraham · PGR · Remand
On remand, the Board held claims 10 and 27 unpatentable as obvious over Robinson, Greim, and Adams because skilled artisans would have optimized heater length through routine experimentation.
RulingsRemand decision- RemandOther
“Standard Operating Procedure 3 communicating the parties’ positions on submitting additional briefing on remand. Ex. 3001.2 We responded on April 15, 2024, authorizing the parties to file additional briefs limited to the question of “whether the Federal Circuit’s determinations on written description are applicable to an obviousness analysis, and if so, how they should be applied.” Ex. 3001. Petitioner filed its Supplemental Brief on Remand on April 29, 2024 (Paper 41, “Pet. Supp. Br.”), and Patent Owner filed its Supplemental Reply Brief on Remand on May 13, 2024 (Paper 42, “PO Supp. Reply”). B. The Issue on Remand As part of our Final Written Decision, we determined that Petitioner established, by a preponderance of the evidence, that claims 10 and 27 lack adequate written description support. FWD 38–41. In view of this, we declined to address Petitioner’s arguments that claims 10 and 27 are unpatentable as obvious in view of Robinson,3 Greim,4 and Adams.5” slip op. at 4
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a Bachelor’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and three to four years of industry experience, or a Master’s degree in mechanical engineering, electrical engineering, chemistry, or physics, or a related field, and one to two years of industry experience. Such a [person of ordinary skill in the art] would have been familiar with electrically powered smoking articles and/or the components and underlying technology used therein. Pet. 14 (citing Ex. 1004 ¶¶ 26–30). Patent Owner states that “[f]or purposes of the trial in this proceeding, [Patent Owner] accepts Petitioner’s proposed education and experience level of the [person of ordinary skill in the art].” PO Resp. 13. In view of the foregoing, for purposes of this Decision, we adopt Petitioner’s definition of a person of ordinary skill in the art. The prior art of record reflects this level of ordinary skill. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself can reflect the appropriate level of ordinary skill in the art).” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that “[t]he challenged claims are unpatentable under any reasonable construction,” and, “for purposes of this proceeding . . . adopts the plain meaning of the claims and submits that no claim term requires construction.” Pet. 14. Patent Owner contends it was improper for Petitioner to adopt the plain meaning of the claims without explaining what it considers the plain meaning of each claim term to be. PO Resp. 13. Patent Owner does not offer a construction for any claim term. PO Resp. 13. After considering the full record developed during trial, we determine that no claim limitations need an express construction for purposes of resolving the controversy.” slip op. at 18
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“Although Patent Owner is correct that Petitioner does not direct us to any disclosure of a heating member having a length that “falls within the claimed range,” such a disclosure in the art is not required for a showing of obviousness. See, e.g., In re Huang, 100 F.3d 135, 136 (Fed. Cir. 1996). In Huang, the claim required a racquet grip comprising a textile layer and a polyurethane layer, and that the ratio of their thicknesses be “larger than approximately 0.18.” Id. at 137. The prior art disclosed a textile layer and polyurethane layer in thickness ratios ranging from 0.111–0.142. Id. at 136. Although the prior art did not disclose a ratio in the claimed range, the Federal Circuit affirmed the Board’s obviousness rejection because the evidence showed that “one of ordinary skill in the art would have experimented with various thicknesses to obtain an optimum range.” Id. at 139; see In re Aller, 220 F.2d 454 (CCPA 1955) (affirming an obviousness rejection of a claim to a chemical process reciting use of 25– 70% sulfuric acid at 40–80 degrees when the prior art disclosed the same reaction with 10% sulfuric acid at 100 degrees); In re Hill, 284 F.2d 955 (CCPA 1960) (affirming an obviousness rejection of a claim to a chemical process conducted at 150–250 degrees when the prior art disclosed the same reaction at 300 degrees). The Federal Circuit also noted that “Huang does not contend that he has achieved unexpected results by increasing the thickness of the polyurethane layer.” Huang, 100 F.3d at 139–140. Those principles apply with equal force to the facts in this case. Here, the evidence of record demonstrates that heaters having a length that spans some percentage of the length of the disposable aerosol forming substance were known in the art. For example, Robinson discloses one embodiment wherein heating element 72 has an elongated portion that extends into tobacco segment 89. Ex. 1006, 27:35–39, Fig. 3. Greim likewise discloses a heating element having some length, which may be inserted into a plug of an aerosol-forming substrate. Ex. 1007, 13, Fig. 4. Adams discloses similar information. Ex. 1008 ¶ 45 (“The axial length of the projection 72 is selected so that it does not extend all the way through the tobacco plug.”), Fig. 7. Following the reasoning in Huang, these disclosures of a heater having some length, albeit not necessarily a length in the claimed range, are sufficient to demonstrate obviousness if there is evidence demonstrating “one of ordinary skill in the art would have experimented with various [lengths] to obtain an optimum range” and there is no evidence that the claimed range provides unexpected results. Huang, 100 F.3d at 139.” slip op. at 22
Patent outcomesUS 10,492,542 unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,492,542 - 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
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.