- PTAB · Mar 28, 2024 · IPR2024-00194 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted IPR on claims 3–6 and 10 on all asserted grounds after finding a reasonable likelihood that claims 3 and 10 are obvious over Setton and Baker.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“We determine that this factor weighs against discretionary denial. Some work has been completed, but the Texas litigation is in its early stages. Although infringement and invalidity contentions have been served (Ex. 1022, 5; Ex. 2002, 5), the majority of the work still remains to be completed, including the Markman briefing and order, fact discovery, and expert discovery (Ex. 2002, 3–5; accord Ex. 1022, 3).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion For the reasons provided above, Petitioner has sufficiently shown (for purposes of institution) that an ordinarily skilled artisan would have been motivated to combine Setton and Baker as proposed, and that the combination teaches, suggests, or renders obvious each limitation of independent claim 3. We have considered Patent Owner’s arguments, but they are unavailing at this stage and on this record. Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will prevail in establishing that the subject matter of claim 3 would have been obvious over Setton and Baker.” slip op. at 34
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For purposes of this Decision, we adopt Petitioner’s proposed level of skill. We are satisfied that Petitioner’s definition generally comports with the level of skill necessary to understand and implement the teachings of the ’099 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Reddy. See Ex. 1003 ¶ 19. In addition, Patent Owner appears to agree with Petitioner regarding the educational background and number of years of work experience. Compare Prelim. Resp. 32, with Pet. 9. At this stage, given the disclosure of the ’099 patent, we do not agree with Patent Owner’s contention that the ordinary artisan would have had experience with “data networks and video streaming systems” generally, rather than “video teleconferencing systems” specifically. However, the analysis in this Decision would not have changed if we had instead adopted Patent Owner’s proposal.10” slip op. at 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“At this stage, we do not agree with Patent Owner’s understanding of the claim’s plain language. Elements 3.1.1 and 3.1.2 require that the “plurality of endpoints” be “configured such that a film strip with frames containing reduced-size video feeds from the conference participants is displayed at the mesh endpoints.” This language does not require that each of the endpoints supply a video feed; rather, it requires that the conference participants supply the video feeds. Also, the claim does not appear to include language that requires any of “the conference participants” to be associated with the non-mesh connected endpoint. Patent Owner assumes that “the conference participants” are the individuals participating from any and every endpoint (see Prelim. Resp. 37), but it fails to sufficiently support this understanding. According to Patent Owner, the claim’s later reference to “‘the mesh-connected conference participants’ . . . show[s] that the scope of ‘the conference participants’ is broader than just ‘mesh-connected endpoints.’” Prelim. Resp. 37; see Ex. 1001, 18:36. We disagree. Even if that claim language demonstrates that some “conference participants” are associated with mesh- connected endpoints, it does not show that the set of “conference participants” is necessarily broader. In fact, the claim language cuts the other way—the claim refers to “the mesh-connected conference participants,” indicating that this term derives antecedent basis from (and is the same as) the “conference participants” referenced earlier in the claim. Moreover, the claim later refers to “a user located at the non-mesh connected endpoint” (Ex. 1001, 18:42–43), which further indicates that the “conference participants” need not include a person associated with the non-mesh connected endpoint. Although Patent Owner points to two passages from the Specification to support its position (see Ex. 1001, 5:13–17, 17:47–49), neither suggests a particular meaning for this claim phrase. One passage describes a particular embodiment in which conference participants receive video streams “from all other endpoints” (id. at 5:13–17),11 and the other simply states that the described system allows a non-mesh endpoint to participate “in much the same way” as mesh-connected endpoints (id. at 17:47–49). In addition, we have assigned little weight to Dr. Sharony’s testimony regarding the meaning of this phrase (see Ex. 2001 ¶ 94) because he reiterates Patent Owner’s legal arguments without either providing technical background or addressing the meaning of terms to an ordinarily skilled artisan. See Philips, 415 F.3d at 1318.” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,204,099 - PTAB · Mar 5, 2024 · IPR2023-01369 · APJ Jean R Homere · IPR · Institution
Review instituted for claims 1–15 on the §103 ground combining Salah, Carrier, and Maninis; the Board found a reasonable likelihood that at least claim 1 would have been obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“evaluated during examination is not persuasive as it is unsupported by evidence in the record before us. Prelim. Resp. 27. For example, Patent Owner does not meaningfully address the art or arguments evaluated by the Examiner during prosecution, nor does the Patent Owner submit a copy of the references applied by the Examiner during prosecution (e.g., U.S. Patent Application No. 2018/0168780 issued to Kopelman) into the record of this proceeding. Put simply, Patent Owner does not explain why Carrier and Maninis are cumulative to the references considered by the Examiner and thus, does not sufficiently support the position that the Examiner considered combinations the same as, or similar to, those presented by Petitioner. Under these circumstances, we find the first part of the Advanced Bionics framework is not satisfied because the Petition sets forth a combination of prior art and arguments that are not the same or substantially the same as that considered by the Examiner during prosecution. Accordingly, we decline to exercise our discretion to deny institution pursuant to 35 U.S.C. § 325(d).” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“Align hereby stipulates that if the Patent Trial and Appeal Board institutes inter partes review on IPR2023-01369, then Align will not pursue in this case, against any of the Challenged Claims, the specific ground advanced in IPR2023-01369 or any ground that reasonably could have been raised in an IPR (i.e., any ground that could be raised under §§102, 103 against any of the Challenged Claims only on the basis of prior art patents or printed publications). Ex. 1028, 2. With the interim guidance in mind, we decline to exercise our discretion to deny institution in this proceeding under Fintiv because Petitioner submitted a Sotera stipulation.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Conclusion Regarding Independent Claim 1 For the foregoing reasons, we determine that Petitioner has established a reasonable likelihood of prevailing on its assertion that independent claim 1 would have been obvious in view of the combination of Salah, Carrier, and Maninis. 9. Dependent claims 2–15 Petitioner also contends that claims 2–15, which depend directly or indirectly from independent claim 1, would have been obvious over the combination of Salah, Carrier, and Maninis. Pet. 41–70. We have reviewed Petitioner’s initial showing as to the additional limitations of these dependent claims, and find that Petitioner has sufficiently shown that the combination of Salah, Carrier, and Maninis teaches each of the limitations of these claims at this stage of the proceeding. Id. We further note that Patent Owner does not separately address the patentability of these claims beyond its arguments as to independent claim 1, addressed above. See Prelim. Resp. We determine, on the current record and for purposes of institution, that the information presented in the Petition demonstrates a reasonable likelihood that Petitioner would prevail in its obviousness contentions regarding claims 2–15.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not contest Petitioner’s proffered definition of the level of ordinary skill in the art or offer a definition of its own. See generally Prelim. Resp. We find Petitioner’s description to be consistent with the problems and solutions disclosed in the ’409 patent and prior art of record, and adopt it as our own for purposes of institution. See, e.g., In re GPAC Inc., 57 F.3d at 1579 (approving the determination of the level of ordinary skill in the art by appeal to the references of record).” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,755,409 - PTAB · Feb 21, 2024 · IPR2023-01287 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood of success on at least one claim based on the obviousness challenges.
RulingsInstitution decision- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“restriction region” should not be limited to an “exclusionary zone” or “an area where the vehicle is excluded from entry,” as asserted by SZ DJI. See Prelim. Resp. 9; Prelim. Sur-reply 2. Upon reviewing the specification of the ’121 patent, it states the following: “[i]n some embodiments, a flight response measure may include allowing the UAV to remain in the flight restriction region, but imposing certain restrictions on the operation of the UAV within the flight restriction region. The UAV may be forced to remain within the flight restriction region.” Ex. 1001, 17:44–49. Construing the claim term “restriction region” in accordance with SZ DJI’s proposed construction as an “exclusionary zone” would exclude these embodiments, which allow the UAV to remain in the flight restriction region, or force the UAV to remain within the flight restriction region. See, e.g., Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996) (Although a preferred embodiment should not be read into claims as limitations, construction of a claim term that excludes a preferred embodiment “is rarely, if ever, correct and would require highly persuasive evidentiary support.”). In light of these embodiments, which do not comport with SZ DJI’s proposed construction, and lacking persuasive evidentiary support from the specification to support its narrow construction, the proper construction of the claim term “restricted region” is broader than SZ DJI would allow. At this stage of the proceeding, lacking a clear construction for the claim term “restriction region” in the Petition itself, we decline to adopt Textron’s implied construction for this claim term presented for the first time in the Preliminary Reply. See Prelim. Reply 1. Instead, for the purposes of institution, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.”3 Our preliminary construction finds support in various embodiments disclosed the specification, which include both confinement and exclusion. See, e.g., Ex. 1001, 17:48–49 (“The UAV may be forced to remain within the flight restriction region.”), 22:46–48 (“For instance, if the user is approaching a flight restriction region, the user may be alerted and may change course of the UAV to exit the flight restriction region.”). During trial, if the construction of the claim term “restriction region” remains in dispute, we invite the parties to provide arguments and evidence regarding the plain and ordinary meaning of this claim term. slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION We conclude that the information presented in the Petition demonstrates that there is a reasonable likelihood that Textron would prevail in challenging at least one of claims 1–30 of the ’121 patent as unpatentable. Accordingly, we institute an IPR as to all challenged claims and all the grounds raised in the Petition. See 37 C.F.R. § 42.108(a). At this stage of the proceeding, we have not made a final determination with respect to the patentability of the challenged claims or the construction of any claim term. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), an IPR is hereby instituted as to all of the challenged claims and all of the grounds raised in the Petition; and” slip op. at 54
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“Based on our initial review of Humphries, we are persuaded by SZ DJI’s argument that the reference does not disclose, either expressly or inherently, “private property,” such as residential and commercial buildings. See Ex. 1004. It is well settled that a prior art reference may anticipate when the claim limitations not expressly found in that reference are nonetheless inherent in it, for example, if the prior art necessarily functions in accordance with, or includes, the claimed limitations. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002). However, the fact that a certain thing may result from a given set of circumstances is not sufficient for inherent anticipation. In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999). Figure 2 of Humphries does not meet the exacting standard of anticipation because there is nothing within the four corners of this reference indicating that the geofence objects 220 actually encompass the city of Clinton, Mississippi, much less that such a location would be associated with private property, such as residential or commercial buildings. Notwithstanding, we believe that Humphries, together with the general background knowledge of a person of ordinary skill in the art, teaches that the geofence annotated in Textron’s version of Figure 2 would encompass a real-world location, such as the city of Clinton, Mississippi, which at the very least includes “a location associated with a private property.” We address this below when addressing the asserted ground based on obviousness over Humphries. See infra Section II.C.2.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the preliminary record, the purported deficiencies identified by SZ DJI do not undermine Textron’s asserted obviousness ground based on the combined teachings of Humphries and Marcus. For example, it is not dispositive that both Humphries and Marcus relate to systems applicable to airborne vehicles, whereas the challenged claims require a ground vehicle, because Humphries explicitly contemplates that its system also is applicable to a ground vehicle. Ex. 1004, 4:26–31 (disclosing that tracked device 120 may be “associated with a vehicle such an automobile, truck or the like”), 5:44–46 (“The object being tracked as described in the present invention is a vehicle (e.g., cars, boats, trucks, trains).”). Moreover, as we explain in our preliminary claim construction analysis above, we decline to adopt SZ DJI’s narrow view of the claim term “restriction region” as limited to exclusion. Instead, we preliminary construe the claim term “restricted region” in accordance with its plain and ordinary meaning as “any region in which it is possible to limit or affect operation of a ground vehicle.” See supra Section II.A. Lastly, even if the user and roles in Humphries and Marcus are different or there are certain disclosures in Marcus that might create tension with its proposed combination with Humphries, this would not undermine Textron’s rationale to combine the teaching of these two reference. Textron does not seek to bodily incorporate all of Marcus into Humphries, but instead only relies on Marcus to teach specifying a location associated with private property. See Pet. 47–48 (citing Ex. 1005 ¶¶ 14, 17). In summary, Textron has shown a reasonable likelihood that it would” slip op. at 38
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,482,121 - PTAB · Dec 6, 2023 · IPR2023-00942 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 11, 12, and 15 on both asserted obviousness grounds, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “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). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of all the challenged claims on all the grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Petitioner’s arguments on this point are not persuasive because part one of the Advanced Bionics framework is not limited to prior art that was substantively considered by the Office. Advanced Bionics states that “[p]reviously presented art includes . . . art provided to the Office by an applicant, such as on an [IDS].” Advanced Bionics, Paper 6 at 7–8. Here, Poupyrev was included on an IDS. Ex. 1007, 153, 236. Moreover, the timing of the IDS submission has no impact on the first part of the Advanced Bionics framework given that the Examiner initialed a copy of the IDS, indicating that Poupyrev had been considered. Id. at 236. Thus, based on the totality of the evidence presented, we determine that Ground 1 includes only the same prior art that previously was presented to the Office.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., 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 Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 18
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“We agree that the Specification provides a definition for this term that corresponds to the construction adopted by the District Court. See Ex. 1001, 5:7–16; Ex. 2004, 2. Inventors can act as their own lexicographers if they clearly set forth a definition of a claim term other than its ordinary and customary meaning. Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 677 (Fed. Cir. 2015). But any such definition must appear in the specification “with reasonable clarity, deliberateness, and precision.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). In this case, we are persuaded that the cited passage exhibits a clear intent to define “control gesture” and does so with the requisite clarity, deliberateness, and precision. We thus determine that the Specification provides an express lexicographic definition for the term. See Ex. 1001, 5:7–16. Accordingly, we preliminarily adopt the District Court’s construction of “control gesture” for purposes of this Decision.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,469,806 - PTAB · Dec 6, 2023 · IPR2023-00943 · APJ Christopher L Ogden · IPR · Institution
Instituted IPR of claims 1–4, 6–8, and 11–14 on all petition grounds after finding a reasonable likelihood that claims 1 and 11 are obvious over Poupyrev and Yun.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“The Director Memo explains that, “[c]onsistent with Sotera Wireless, Inc., 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 Memo 3 (footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). The Director Memo explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . and allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8.” slip op. at 8
- 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) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’524 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
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Meta argues that a person of ordinary skill in the art would have had “a bachelor’s degree in electrical engineering or computer science (or an equivalent degree), and two years of practical or industry experience in the field of human computer interaction, including implementation of computerbased systems and software for providing haptic feedback effects to a user.” Pet. 4–5 (citing Ex. 1002 ¶¶ 12–13). At this stage, Immersion does not contest this definition of the level of ordinary skill. See Prelim. Resp. 9. Because it is presently uncontested, supported by testimonial evidence, and appears consistent with the types of problems and solutions in the ’524 patent, we adopt Meta’s articulation of the level of ordinary skill for this decision.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we have not identified any claim terms that clearly depart from their ordinary and customary meanings, and our decision to institute trial does not require us to construe any 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))). Accordingly, we address the claim limitations below in the context of the prior art.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,896,524 - PTAB · Dec 6, 2023 · IPR2023-00947 · APJ Michael R Zecher · IPR · Institution
Instituted IPR on claims 1–3, 5, 6, 8–11, 13, 14, 16–19, 21, 22, and 24 based on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this interim guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Meta has provided a Sotera stipulation. Pet. 4; see also Prelim. Resp. 29 (Immersion acknowledging that Meta offered a Sotera stipulation). We do not agree with Immersion’s argument that we can effectively ignore the interim guidance in the Director’s Memo because, prior to her guidance, another Board panel did not find a Sotera stipulation to be sufficient to overcome a trial date scheduled significantly before the projected due date for a final written decision. Prelim. Resp. 29–30 (citing Cisco, IPR2021-00329, Paper 13). As Immersion correctly notes, the Cisco case issued in July 2021, which is roughly one year before the Director Memo issued in June 2022. See id. at 29. The Director Memo clearly states that it is “binding agency guidance,” which, in essence, abrogates any prior inconsistent holdings by Board panels regarding the application of Fintiv, including the non-precedential holding in the Cisco case relied on by Immersion. Director Memo at 3. Put simply, because Meta has provided a Sotera stipulation, the Director Memo is controlling and the Fintiv factors are not a basis for denying institution.” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“constructions for the claim term “free space” in the district court case, but Meta nonetheless contends that it “does not believe any term of the ’298 patent requires express construction at this time because . . . the claims are obvious under the constructions proposed by both parties in the pending litigation, or any other reasonable construction.” Pet. 6 (citing Ex. 1007, 2–3 (“Joint Claim Construction Statement” submitted by the parties in the district court case)). In its Preliminary Response, Immersion contends that “all claim terms should be afforded their ordinary and customary meaning, as [would have been] understood by a [person of ordinary skill in the art], in the context of the [’298] patent specification.” Prelim. Resp. 9 (citing Ex. 2002 ¶¶ 37, 38 (Declaration of Gregory Abowd, D.Phil.)). Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 4–5 (citing Ex. 1002 ¶¶ 12, 13). Relying on the testimony of Dr. Abowd, Immersion offers the same assessment of the level of ordinary skill in the art, except Immersion excludes industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body. Prelim. Resp. 8–9 (citing Ex. 2002 ¶ 11). The level of skill advanced by each party requires at least a Bachelor of Science degree in electrical engineering, computer science, or an equivalent degree. We do not discern a material difference between the industry experiences advanced by either party, nor does either party premise its arguments exclusively on its own industry experience. To the extent necessary, and for purposes of institution, we adopt Meta’s assessment of the level of ordinary skill in the art because Dr. Cooperstock’s identification of relevant industry experience applicable to determining the position and/or orientation of a device used by a user, such as a device worn on the human body, is consistent with the ’298 patent and the asserted prior art. We note, however, that our obviousness analysis would be the same under either party’s assessment.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“The dispute between the parties appears to center on how Nogami’s system assigns reference intensity levels to each of stimulation generation units 10–12 worn by user 1. Relying on the testimony of Dr. Cooperstock, Meta asserts “[i]t would have been obvious to implement Nogami to provide an identifier for each stimulation generation unit [10, 11, and 12] in order to allow CPU 201 to distinguish and associate it with the region of the body [of user 1] on which it is worn.” Pet. 33 (quoting Ex. 1002 ¶ 89). At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because it is consistent with Nogami’s disclosure that CPU 201 generates operation setting information (e.g., the reference intensity levels) for controlling the operation of stimulation generation units 10–12, which can vary based on whether these stimulation generation units are located in attention range 50. Ex. 1003 ¶¶ 120, 174, Fig. 4, step 406. Dr. Cooperstock further testifies that “[t]he concept of an ‘identifier’ for a peripheral is a basic concept in computer science or engineering” because [i]t was elementary knowledge of ordinary skilled artisans that virtually all objects on a computer capable of being operated on or manipulated by a computer – such as peripheral device, a computer file, and even a location within the computer’s memory – are associated with an identifier that allows the computer to identify the object and distinguish it from other objects in the computer. Ex. 1002 ¶ 90. At this stage of the proceeding, we preliminary credit Dr. Cooperstock’s testimony because Nogami discloses an example of using an identifier in this way. That is, Nogami disclose using barcode 45 that “indicates ID [identification] information (e.g., an ID) unique to the stimulation generation unit 10.” Ex. 1003 ¶ 206, Fig. 11. Although Nogami discloses the example of barcode 45 only in relation to stimulation generation unit 10, it seems reasonable for a person of ordinary skill in the art to infer this teaching of barcode 45 equally applies to stimulation generation units 11 and 12 so that CPU 201 may also use barcode 45 as unique identifiers for these two stimulation generation units to distinguish them from stimulation generation unit 10. See KSR, 550 U.S. at 418 (An obviousness evaluation “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Taking into account Nogami’s disclosure with respect to assigning different reference intensity levels depending on the region of the body of user 1 on which stimulation generation units 10–12 are worn, together with Nogami’s teaching or suggestion of using an identifier (e.g., barcode 45) that indicates ID information unique to each of stimulation generation units 10– 12, we are persuaded that the preliminary record supports that it would have” slip op. at 28
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,248,298 - PTAB · Oct 19, 2023 · IPR2023-00744 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–3 and 5–7 on all petitioned grounds, finding a reasonable likelihood that PayPal would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on the preliminary record, we determine that PayPal has shown that there is a reasonable likelihood that it would prevail in challenging at least one of claims 5 and 7 the ’845 patent as unpatentable. We begin our analysis with the principles of law that generally apply to an asserted ground based on anticipation, followed by an assessment of the level of skill in the art, an overview of Tumminaro, and then we address the parties’ contentions with respect to the challenged claims.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“Upon reviewing the specification of the ’845 patent, it provides an explicit definition of the claim term “unbanked subscriber.” That is, the specification states that “[a]n ‘unbanked subscriber’ is a subscriber that does not have (or does not have access to) a bank account or credit union account.” Ex. 1001, 12:25–27. By using the verb “is” following “unbanked subscriber,” the specification sets forth an explicit definition for this claim term with reasonable clarity, deliberateness, and precision. At first glance, the construction that PayPal proposes appears consistent with this explicit definition. However, PayPal uses the language “a financial institution account,” whereas the specification uses the language “a bank account or credit union account.” We decline to adopt PayPal’s construction because it does not use the same terminology as the specification to define an “unbanked subscriber.” Because we decline to adopt PayPal’s proposed construction, we need not address Fintiv’s argument as to whether the “financial institution” term added by PayPal’s proposed construction “encompass[es] any institution that provides services to customers who maintain a financial account with the institution,” including “entities that manage debit card accounts (including prepaid debit card accounts)” and “institutions that manage Automated Clearing House (ACH) and/or ATM transactions.” Prelim. Resp. 10.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“that enables us to determine the knowledge level of a person of ordinary skill in the art. Relying on the testimony of Dr. Chatterjee, PayPal argues the following: [a]s of 2011, a [person of ordinary skill in the art] in the ’845 patent’s field would have [had] a working knowledge of mobile payment systems, including of software development for mobile payment systems. Such a [person of ordinary skill in the art] would have had a bachelor’s degree in electrical engineering, computer science, or equivalent training and approximately two years of work experience in software development in the field of mobile payment systems. Lack of work experience can be remedied by additional education, and vice versa. Pet. 6 (citing Ex. 1003 ¶ 37). In the Preliminary Response, Fintiv does not address the level of skill in the art. See Prelim. Resp. Fintiv’s declarant, however, appears to agree with PayPal’s assessment of the level of skill in the art. See Ex. 2001 ¶¶ 28, 29. To the extent necessary, and for purposes of institution, we adopt PayPal’s assessment of the level of skill in the art because it is consistent with the ’845 patent and the asserted prior art.” slip op. at 13
- Expert testimonyPetitioner expert creditedOther
“that would support a finding that Tumminaro’s unbanked users may select from either a pooled account or a reloadable prepaid debit account when transferring funds to a specified recipient. See Pet. 43. As we explain above, Tumminaro’s unbanked user is capable of accessing both a pooled account and a reloadable prepaid debit account. See supra Section II.B.4.a. PayPal’s declarant, Dr. Chatterjee, testifies that, “[w]here a given user has two or more accounts associated, for example, a pooled account and a separate prepaid account such as a . . . prepaid debit card, the user would typically pick one of the multiple accounts to use as a funding source.” Ex. 1003 ¶ 157. We preliminarily credit Dr. Chatterjee’s testimony in this regard because he appears to consider the relevant disclosures of Tumminaro together with the knowledge of a person of ordinary skill in the art. See Paulsen, 30 F.3d at 1480.” slip op. at 27
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,538,845 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00398 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–22 on the sole § 103 ground, finding a reasonable likelihood of prevailing on at least claim 1 over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion as to Claim 1 Based on the present record, we conclude Petitioner has provided sufficient argument and evidence in relation to the proposed obviousness of claim 1 over Dill, Vadhri, and Akashika, to demonstrate a reasonable likelihood that Petitioner would prevail with respect to this challenge at trial.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’196 patent “would have had a working knowledge of mobile payment systems and techniques,” as well as “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4; Ex. 1003 ¶¶ 21–23. Further according to Petitioner: “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 4; Ex. 1003 ¶ 22. The Preliminary Response does not dispute this aspect of the Petition. For purposes of this Decision, we determine a person of ordinary skill in the art “would have had a working knowledge of mobile payment systems and techniques” and “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting,” as Petitioner proposes. Pet. 4. We are satisfied that this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. See Ex. 1003 ¶ 22; Ex. 2001 ¶¶ 33–35 (agreeing with this articulation of the level of ordinary skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.” Prelim. Resp. 8; Ex. 2001 ¶¶ 39–41. Patent Owner cites passages of the ’196 patent specification to support this argument. See Prelim. Resp. 8 (citing Ex. 1001, 11:32–33, 12:27–36); Ex. 2001 ¶¶ 40–41. Patent Owner proffers this claim construction because, according to Patent Owner, “the Petition (through its mappings [of the ’196 patent to Dill]) has implicitly raised the possibility that a ‘mobile device’ need not be a physical device, and need not even be mobile.” Prelim. Resp. 9–10 (citing Pet. 22–23, 33; Ex. 1005, Fig. 9); Ex. 2001 ¶¶ 39–41. At this stage, we agree with Patent Owner’s understanding of the “mobile device” claim term. Patent Owner’s construction generally accords with the term’s plain and ordinary meaning and is supported by the ’196 patent specification. See, e.g., Ex. 1001, 11:32–35, 12:27–36 (identifying a phone and a tablet as “mobile device” examples). We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(a) below. In this Decision, for purposes of institution, we construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.” Prelim. Resp. 10; Ex. 2001 ¶¶ 42–43. Patent Owner contends this corresponds to an express definition of the term in the ’196 patent specification. See Prelim. Resp. 10 (citing Ex. 1001, 7:14–16); Ex. 2001 ¶ 42. Patent Owner asserts its proffered construction also is consistent with the ’196 patent claims and specification, taken as a whole. See Prelim. Resp. 10–11 (citing Ex. 1001, Fig. 2, 11:32–40, 12:27–33). Patent Owner suggests that applying its proffered construction leads to a deficiency in the Petition’s contentions concerning Dill. See Prelim. Resp. 11, 18–19; Ex. 2001 ¶¶ 43, 51–52. At this stage, we agree with Patent Owner’s understanding of the “mobile wallet application” claim term. The ’196 patent specification states: “As used herein, a mobile wallet application is a mobile wallet application installed on a SIM card or elsewhere on a mobile device.” Ex. 1001, 7:14–16 (emphases added). For purposes of institution, we conclude this is an express definition of the claim term “mobile wallet application.” We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(b) below. In this Decision, for purposes of institution, we construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.”” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,438,196 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–22 on the ground that they would have been obvious over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4. Petitioner also asserts that an ordinary artisan “would have had a working knowledge of mobile payment systems and techniques pertinent to the ’488 patent,” and that a “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. at 3–4 (citing Ex. 1003 ¶¶ 21–23).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“On this record, we preliminarily determine that the term “mobile wallet” is a stored value account or prepaid access account that allows its owner to pay for goods and services. This construction is based on the Specification’s express definition of this term: The term “mobile wallet” or “mobile wallet account” refers to a stored value account or prepaid access account (PPA) that allows the owner (or “subscriber”) to pay for goods and services on the mFS platform from his or her mobile wallet account. Ex. 1001, 9:9–13; see id. at 6:30–35 (“mFS” refers to “mobile financial services”). Our construction is also consistent with the construction recently adopted by a district court. See Fintiv, Inc. v. PayPal Holdings, Inc., 6:22- cv-00288, Dkt #60 (W.D. Tex.) (claim construction order; included in the record as Exhibit 3002). At this stage, we discern no need to construe the larger phrase identified by Petitioner.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,208,488 - PTAB · Jun 14, 2023 · IPR2022-01593 · APJ Michael R Zecher · IPR · Institution
The Board instituted IPR on claims 1–19 on all petitioned grounds, finding a reasonable likelihood that Truist would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedInstituted
“On June 21, 2022, the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (“Director”) issued a memo that further clarifies how we should approach analyzing the Fintiv factors. Interim Procedure for Discretionary Denials in AIA Post-grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. (“Director Memo”). Notably, the Director stated that “the PTAB [Patent Trial and Appeal Board] 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 ground that could have been reasonably raised before the PTAB.” Director Memo at 3. With this guidance in mind, we decline to exercise our discretion to deny institution of this proceeding based on Fintiv because Truist has provided a Sotera stipulation. Ex. 1028; see also Prelim. Sur-reply 1–2 (USAA acknowledging receipt of the Truist’s Sotera stipulation, and then stating “USAA understands that under the June 21, 2022 Memorandum issued by Director Vidal, such a stipulation is dispositive of the Fintiv analysis”).” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“§ 42.4(a), we may not institute an IPR unless the information presented in the Petition and any response thereto shows “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) (2020). Taking into account USAA’s Preliminary Response, Truist’s Preliminary Reply, and USAA’s Preliminary Sur-reply, we conclude that the information presented in the Petition establishes that there is a reasonable likelihood that Truist would prevail in challenging at least one of claims 1–19 of the ’090 patent as unpatentable. Pursuant to § 314, we hereby institute an inter partes review as to these claims of the ’090 patent.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“For purposes of this proceeding, Truist contends that “the plain meaning of each claim term can be applied.” Pet. 4 (citing Ex. 1002 ¶ 30 (Declaration of Dr. David Doermann in support of Petition)). For purposes of its Preliminary Response only, “[USAA] does not assert that any claim terms need to be construed” to determine whether the Petition meets the reasonable likelihood threshold standard for institution. Prelim. Resp. 18. Based on the preliminary record, there is no readily discernible controversy between the parties that requires us to construe any claim terms at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on the preliminary record, we are not persuaded by USAA’s argument for two reasons. First, USAA’s argument is not commensurate in scope with the disputed limitation, which merely requires, “when the monitoring criterion is determined to be satisfied, control the image capture device to capture an image depicting the target document in the field of view of the image capture device.” See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (explaining that limitations not appearing in the claims cannot be relied upon for patentability). Based on the arguments and evidence currently before us, we are persuaded that the plain language of this limitation is agnostic as to whether the phrase “control[ling] the image capture device to capture an image” requires automatic or manual image capture.” slip op. at 25
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,818,090
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.