- PTAB · Dec 13, 2021 · IPR2020-01062 · APJ Ken B Barrett · IPR · Final written decision
The Board granted cancellation of claims 1–15, 19–20, and 22–24; allowed substitute claims 26–29, 31–38, and 40–44; and denied substitute claims 30 and 39 for lack of written-description support.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Ex. 1003 ¶¶ 78–79; see Pet. 10. In the Institution Decision, we adopted Mr. Fischer’s definition for purposes of that decision. Institution Decision (Paper 7) 9–10. Patent Owner states that it “accepts that definition for the purposes of this proceeding.” Rev’d MTA 24. Mr. Fischer’s definition is consistent with the level of ordinary skill reflected in the prior art references of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (recognizing that the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Mr. Fischer’s definition of the person of ordinary skill in the art.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes constructions for “code” and “Electronic Product Code (EPC).” Opp. to Rev’d MTA 6. Patent Owner asserts that “the limitations of the substitute claims do not require construction and should, instead, be construed in accordance with their ordinary meaning.” Rev’d MTA 24. According to Patent Owner, the addition of certain features of the proposed substitute claims renders moot Petitioner’s arguments concerning the meaning of the term “code.” Id. Additionally, Petitioner argues that the content of the recited codes— an EPC and a code different from the EPC—constitutes “printed matter” (non-functional descriptive material) and, therefore, are not entitled to patentable weight. Opp. to Rev’d MTA 7–10; Pet. Sur-reply 5–6. We need not reach this issue. Even if we construed the specifically recited codes as being non-functional descriptive material, Petitioner, for reasons discussed below, has not shown that the claimed subject matter is unpatentable. Also, the parties do not identify any other issue in this case that turns on whether the two recited codes are non-functional descriptive material. See, e.g., Opp. to Rev’d MTA 11–12 (Petitioner arguing that the relied-on prior art discloses codes in the form of an EPC and a TID (i.e. a code other than the EPC)). On this record, we determine that no claim terms require express construction.” slip op. at 14
- PTAB / AIA Trials › Motions to amend / substitute claimsMotion to amend granted in partGranted in part
“A patent claim is indefinite when that claim, “viewed in light of the specification and prosecution history, [does not] inform those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. BioSig Instruments, Inc., 572 U.S. 898, 910 (2014).” slip op. at 12
- ScopeDecided for patent owner
“Motion to Amend, that “[c]onstruing ‘a first and second memory bank’ to mean, for example, two memories instead of ‘a memory’ also impermissibly broadens the claims.” Opp. to Rev’d MTA 4 n.1 (citing Ex. 1032 ¶¶ 3024– 3027); see also Pet. Sur-reply 1–2 (“the scope of the proposed claims is impermissibly broadened to encompass logical memory banks storing codes in more than one memory.”); Tr. 7:12–13 (“That’s improper because it enlarges the scope of claims to include two memories instead of just one.”). Petitioner’s argument appears to assume that the proposed substitute claims require two memories (as opposed to the recited “memory bank[s]”) and that, because two memories are quantitatively more than one memory, the claims have been broadened. We disagree with Petitioner’s arguments. The arguments are contingent upon a construction of two memory banks being the same scope as two memories. See Opp. to Rev’d MTA 4 n.1 (“Construing . . . impermissibly broadens the claims.”). Petitioner has not offered any persuasive argument or evidence that the two different terms—“memory” and “memory bank” are coextensive or that the more general term “memory” can encompass two of the more specific “memory bank[s].” Further, even if the proposed substitute claims required two memories rather than two memory banks, adding the requirement of a second memory (or, as written in the proposed claims, two memory banks rather than “a memory” as in the issued claim) is further limiting the claims and, therefore, is not broadening the scope. See Hockerson-Halberstadt, Inc., 183 F.3d at 1374. We agree with Patent Owner that the amended language regarding two memory banks does not impermissibly broaden the scope relative to the original claims.” slip op. at 18
Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham · NautilusPatents in suitUS 8,134,451 - Cradlepoint, Inc. / Dell Inc. et al. v. Sisvel International S.A.All claims unpatentablePTAB · Dec 13, 2021 · IPR2020-01070 · APJ Terrence W Mcmillin · IPR · Final written decision
Claims 10, 11, 13, 17, and 24 are unpatentable; the revised motion to amend proposing claims 36–40 is denied.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedOther
“We do not find it necessary to resolve the differences between the contentions of the parties as to the appropriate level of skill in the art. Neither party explicitly applies or relies on its specific proposed level of skill in the art in support of its contentions relating to patentability. At oral argument, Petitioner’s counsel stated that there was no material dispute relating to the level of ordinary skill in the art. Tr. 7:18–23; see also Paper 51, 11 (“The results of the invalidity analysis are the same regardless of [the] definition used.”). In its Reply, Petitioner acknowledged, “[r]egardless of which POSITA definition is adopted, a POSITA’s understanding of the ’698 patent and prior art, reasons for making the combinations, and expectations of success would have been the same.” been the same.” Sur-reply 1. And, Patent Owner’s technical expert, Mr. Bates, acknowledged the differences between the contentions of the parties relating to the level of ordinary skill in the art are insignificant. Ex. 2006 (Bates Decl.) ¶ 22 (“[A]pplying Petitioner’s level of skill would not change my opinions.”). We agree and would make the same factual findings and reach the same ultimate conclusions with respect to both the challenged claims and the revised substitute claims under either of the contentions of the parties. To the extent necessary to conducting our analysis of the arguments and evidence in this proceeding, we adopt Patent Owner’s contention as to the level of ordinary skill in the art. It is the broader of the two and consistent with the level of skill reflected in the Specification and prior art.” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“There is no textual basis in the claim language for requiring a GSM or UMTS telecommunications network. Claim 10’s language is not plainly limited to GSM or UMTS telecommunications networks. Patent Owner identifies no disclaimer or explicit definition of “connection rejection message” in the ’698 patent that justifies importing a requirement for a GSM or UMTS telecommunications network. Patent Owner attempts to support its construction with this sentence from the Specification of the ’698 patent: “The invention is applicable in many different cellular telecommunication systems, such as the UMTS system or the GSM system.” Resp. 10 (citing Ex. 1001, 7:41–43). However, this language clearly is permissive, not mandatory. At most, this sentence explains that the cellular telecommunication system can be a UMTS system or GSM system; not that the cellular telecommunication system must be a UMTS system or GSM system.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“There is no textual basis in the claims for requiring that the frequency information comprise multiple channels. Patent Owner identifies no disclaimer or explicit definition of “frequency parameter” in the ’698 patent that justifies importing a requirement that the frequency information comprise multiple channels.” slip op. at 15
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Petitioner’s showing with regard to this limitation is well-supported and persuasive. We find Kallin discloses “receiving a connection rejection message” as recited in claim 10.” slip op. at 29
Patent outcomesUS 7,433,698 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,433,698 - PTAB · Dec 13, 2021 · IPR2021-01128 · APJ Miriam L Quinn · IPR · Institution
The Board instituted IPR on claims 1–3, 5–12, and 14–19 on all petitioned grounds, after finding a reasonable likelihood of success on the § 103 grounds.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner proposes the same articulation of the level of ordinary skill in the art that the Administrative Law Judge adopted in the related ITC proceeding, which is as follows: one of ordinary skill in the art would have had a bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and at least two years of experience in the research, design, development, and/or testing of touch sensors, human-machine interaction and interfaces, and/or graphical user interfaces, and related firmware and software, or the equivalent, with additional education substituting for experience and vice versa. Pet. 6; Ex. 1008, 8. Dr. Bederson agrees with it. See Pet. 6, Bederson Decl. ¶ 30. This articulation of the level of ordinary skill is consistent with the problems and solutions in the ’173 patent and the prior art of record. Therefore, we adopt the proposed articulation of the level of ordinary skill in the art for purposes of this decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Although a number of ’173 patent claim terms have been construed in the related ITC proceeding, Petitioner contends that we do not need to explicitly construe any claim terms. Pet. 6–7. In particular, the constructions for the selected terms in the related ITC proceeding are as follows, according to Petitioner. Term Construction a sensing element that com-a physical electrical sensing element prises a sensing path that com-made of conductive substances that prises a length comprises a path for sensing that is determined for each use that com-prises a length object either an inanimate object, such as a wiper, pointer, or stylus, or alterna-tively, a human finger or other ap-pendage any of whose presence ad-jacent the element will create a lo-calized capacitive coupling from a region of the element back to a cir-cuit reference via any circuitous path, whether galvanically or nongalvanically displacement distance and direction of movement Pet. 6−7. Petitioner does not dispute these constructions (id.), which we find reasonable at this juncture. Therefore, we preliminarily adopt these constructions for purposes of institution.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At our discretion, 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) (2018). Applying that standard, we institute an inter partes review of all asserted grounds and all challenged claims of the ’173 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record, including any timely response by Patent Owner.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Further, to the extent the range of parameter values is not expressly or inherently taught by Trent, Petitioner argues that it would have been obvious to set a parameter to an initial value within a range that is associated with the length of the sensing path. Id. Relying on testimony of Dr. Bederson, Petitioner argues that a person of ordinary skill in the art would have had reason to combine the volume control knob of Trent’s Figure 36 (reproduced above in our overview of Trent) with functionality that sets the volume to an initial value as disclosed in Trent’s paragraph 92. Pet. 22 (citing Ex. 1005 ¶¶ 3, 4−11; Bederson Decl. ¶¶ 91–93). Petitioner also argues that Trent identifies, as part of the prior art “solutions” to the problem of the invention, a two-dimensional sensor in which users can slide their fingers to generate scrolling actions. Id. (citing Ex. 1005 ¶ 11). According to Dr. Bederson, a person of ordinary skill in the art would have understood that such a sensor would set a parameter to an initial value as recited in the claims. See Bederson Decl. ¶ 93. We find Petitioner’s arguments, and Dr. Bederson’s supporting testimony on the above points, sufficiently persuasive at this preliminary stage to show by a reasonable likelihood that Trent discloses or teaches the Setting Parameter Limitation.” slip op. at 13
Claim construction§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 8,432,173 - Cellink AB v. Organovo, Inc.Institution deniedPTAB · Dec 13, 2021 · IPR2021-01049 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11 were unpatentable on any asserted obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art would have had “a minimum of a bachelor’s degree in mechanical engineering, electrical engineering, biomedical engineering, or a related field, and approximately 5 years of relevant experience or equivalent study in electro mechanical systems, regenerative medicine, tissue/organ engineering, and/or biologic and medical research.” Pet. 13 (citing Ex. 1002 ¶¶ 10–12). Patent Owner states that for purposes of its Preliminary Response, it “does not address” Petitioner’s definition, but also states that it “does not agree or acquiesce” to Petitioner’s purported definition. Prelim. Resp. 3. In light of the record now before us, for purposes of this Decision, we accept Petitioner’s definition of a person of ordinary skill in the art. Additionally, we note that the level of ordinary skill in the art is reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides proposed constructions for several claim terms, including the means-plus-function claim terms. Pet. 13–17. For purposes of the Preliminary Response, Patent Owner applies Petitioner’s constructions. Prelim. Resp. 3. We determine that we do not need to resolve any claim construction disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“computer processor (system controller),” Petitioner presents two paragraphs in Lipson describing that Lipson’s system controller operates according to “fabrication system software” and “an electronic data file.” Pet. 28 (quoting Ex. 1004 ¶¶ 95 and 94, respectively).6 At best, paragraphs 94 and 95 of Lipson indicate that Lipson’s system controller is a programmable computer processor. These paragraphs in Lipson do not address whether Lipson’s bioprinter comprises the system controller (the programmable computer 6 Petitioner includes a citation to paragraphs 97–101 of the Cimino declaration at the end of the section of its claim chart addressing this limitation. Pet. 29. But, in paragraphs 97 and 98 of his declaration, Dr. Cimino simply mirrors the language in the Petition. Ex. 1002 ¶¶ 97, 98. And paragraphs 99–101 relate to different limitations recited in claim 1 and Petitioner’s alternative arguments based on a § 112 ¶ 6 construction for “programmable computer processor.” Ex. 1002 ¶¶ 99–101. processor), as claim 1 requires. Petitioner and Dr. Cimino likewise fail to address whether Lipson’s bioprinter comprises the system controller when discussing these paragraphs. By way of contrast, we note that for other components the bioprinter comprises, such as one or more printer heads recited in claim 1, Petitioner explicitly maps the component to the “fabrication system” depicted in Lipson Figure 1. Pet. 21–22. Petitioner, however, does not provide a similar analysis for Lipson’s system controller. Petitioner’s failure to do so here is particularly problematic in view of Lipson’s express disclosure that the system controller is an “external computer” and Lipson’s depiction of system controller 104 as a laptop computer that is separate from the bioprinter in Figure 10. Ex. 1004 ¶¶ 26, 90, Fig. 10. As such, there is evidence of record suggesting that Lipson’s fabrication system, which according to Petitioner corresponds to the bioprinter of claim 1, does not comprise the system controller.7 Ex. 1004 ¶ 90, Fig. 10. Petitioner bears the burden of demonstrating that Lipson discloses or suggests a bioprinter comprising a computer programmable processor. In view of Petitioner’s reliance solely on general descriptions of Lipson’s system controller and Petitioner’s failure to address specifically the relationship between the system controller and bioprinter in Lipson, we are 7 Petitioner argues that, to the extent § 112 ¶ 6 applies to the term “programmable computer processor,” the function is “regulating the dispensing of the bio-ink,” and the corresponding structure is software. Pet. 16–17. Petitioner contends that Lipson discloses software for performing the claimed function in paragraphs 95, 96, and 99. Pet. 29. These paragraphs in Lipson, however, describe the software in system controller 104, and, therefore, do not remedy Petitioner’s failure to demonstrate Lipson’s bioprinter comprises a “programmable computer processor.”” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,149,952 - Cellink AB v. Organovo, Inc.Institution deniedPTAB · Dec 13, 2021 · IPR2021-01050 · APJ Elizabeth M Roesel · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving claims 1–15 obvious over the asserted prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)); see also 37 C.F.R. § 42.104(b) (requiring a petition for inter partes review to identify how the challenged claim is to be construed and where each element of the claim is found in the prior art patents or printed publications relied upon). slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightMotivation not foundNot shown unpatentable
“Alternatively, Petitioner contends that “it would have been an obvious design choice to move the printer head in the Z-axis direction instead of moving the receiving surface.” Pet. 28. As an obviousness rationale, Petitioner asserts “there were only two options (moving the printer head or moving the receiving surface), both of which would have been obvious.” Id.; see also Ex. 1002 ¶ 100 (same). Petitioner and Dr. Cimino provide no further explanation or evidentiary support for their assertion. conclusory and insufficiently supported. Prelim. Resp. 12–16. Essentially, Petitioner and Dr. Cimino assert that “there were only two options,” one of which is disclosed in the prior art, but not claimed, and the other of which is claimed, but not disclosed in the prior art. Pet. 28; Ex. 1002 ¶ 100. That naked assertion is inherently based on a hindsight view of the claims of the challenged patent. Petitioner and Dr. Cimino provide no analysis supporting their assertion that “moving the printer head or moving the receiving surface” were the only two options. Pet. 28; Ex. 1002 ¶ 100. Petitioner and Dr. Cimino fail to consider that there are three directions, namely the X-, Y-, and Z-axis directions, in which the printer head or the receiving surface could be moved.6 Under these circumstances, Petitioner’s and Dr. Cimino’s “only two options” rationale does not meet the standard of “articulated reasoning with some rational underpinning” sufficient to support institution based on obviousness. In re Kahn, 441 F.3d at 988. Furthermore, Petitioner and Dr. Cimino fail to explain sufficiently how or why a POSA would have considered modifying Lipson’s system controller to position material deposition tool 18 in the Z-axis direction 6 Assuming only one of these components moves in each direction, this leads to eight possible combinations: (1) the printer head moves in the X-, Y-, and Z- directions; (2) the receiving surface moves in the X-, Y-, and Z-directions; (3) the printer head moves in the X-direction, and the receiving surface moves in the Y- and Z-directions; (4) the receiving surface moves in the X-direction, and the printer head moves in the Y- and Z-directions; (5) the printer head moves in the Y-direction, and the receiving surface moves in the X- and Z-directions; (6) the receiving surface moves in the Y-direction, and the printer head moves in the X- and Z-directions; (7) the printer head moves in the Z-direction, and the receiving surface moves in the X- and Y-directions; (8) the receiving surface moves in the Z-direction, and the printer head moves in the X- and Y-directions. discloses. Ex. 1004 ¶ 53. Petitioner and Dr. Cimino also fail to explain sufficiently how or why a POSA would have modified Lipson’s fabrication system to accomplish positioning material deposition tool 18 in three dimensions as opposed to two, as Lipson discloses. Id.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on Dr. Cimino’s testimony, Petitioner contends that a person of ordinary skill in the art (“POSA”) would have had “a minimum of a bachelor’s degree in mechanical engineering, electrical engineering, biomedical engineering, or a related field, and approximately [five] years of relevant experience or equivalent study in electromechanical systems, regenerative medicine, tissue/organ engineering, and/or biologic and medical research.” Pet. 13 (citing Ex. 1002 ¶¶ 10–12). Petitioner asserts that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. dispute Petitioner’s definition of a POSA. Prelim. Resp. 3. We find that Petitioner’s definition of a POSA is consistent with the scope and content of the ’369 Patent and the asserted prior art, and we apply this definition for purposes of this Decision.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“In an inter partes review, we apply the same claim construction standard as would be used by a district court to construe a claim in a civil action involving the validity or infringement of a patent. 37 C.F.R. § 42.100(b). Under that standard, claim terms are given their ordinary and customary meaning, as would have been 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 of record. Id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012). Petitioner provides proposed constructions for several claim terms, including the means-plus-function claim terms. Pet. 14–17. For purposes of the Preliminary Response, Patent Owner applies Petitioner’s constructions. Prelim. Resp. 3. We determine that we do not need to resolve any claim construction disputes for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”); see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of inter partes review).” slip op. at 8
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,855,369 - Unified Patents, LLC v. Voice Tech CorporationAll claims unpatentablePTAB · Dec 13, 2021 · IPR2020-01018 · APJ John F Horvath · IPR · Final written decision
Claims 1–8 are unpatentable as obvious over Wong and Beauregard; the Board did not reach the Ben-Efraim and Balakrishnan ground.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerNot time barredDecided for petitioner
“an unnamed RPI, we are not persuaded by Patent Owner’s argument that this proceeding should be terminated for failure to identify all RPIs. First, Patent Owner’s argument is based on an incorrect premise that 35 U.S.C. § 312(a) is a jurisdictional statute that must be satisfied to give the Board jurisdiction. This premise is contrary to the Board’s precedential decision in Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38, 5 (PTAB Mar. 4, 2016) (precedential) (“§ 312(a) is not jurisdictional”). may rectify non-compliance with the statute. Id., Paper 38 at 5. The Federal Circuit has upheld the Board’s finding that § 312(a) is not jurisdictional. See Mayne Pharma Int’l Pty. Ltd. v. Merck Sharp & Dohme Corp., 927 F.3d 1232, 1240 (Fed. Cir. 2019) (“[I]f a petition fails to identify all real parties in interest under § 312(a)(2), the Director can, and does, allow the petitioner to add a real party in interest.”).” slip op. at 5
- Strike new argumentGranted
“Petitioner moved to strike Exhibits 2038–2041 as against Board policy and to deny consideration of those portions of the Sur-Reply that rely on these Exhibits. See Paper 39, 1; see also Patent Trial and Appeal Board Consolidated Trial Practice Guide at 73 (Nov. 2019)2 (“The sur-reply may not be accompanied by new evidence other than the deposition transcripts of the cross-examination of any reply witness.”). Patent Owner opposed. See Paper 40. We granted Petitioner’s motion, and expunged Exhibits 2038– 1 Unless noted otherwise, we cite to the public versions of the papers filed by the parties. 2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated to any arguments first presented in Patent Owner’s Sur-Reply that rely on any of Exhibits 2038–2041. An oral hearing was held on September 21, 2021, and the hearing transcript is included in the record. See Paper 45 (“Tr.”).” slip op. at 2
- Skill levelSkill level board ownOther
“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The level of skill in the art should be commensurate with the problems and solutions disclosed in the prior art. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For the reasons discussed in § II.F.3, infra, we find the field of invention is voice in the art would have had a bachelor’s degree in electrical engineering, computer science, or a related field, and three years of experience working on voice activated computing. slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“We agree with Petitioner. Neither the Specification nor the prosecution history defines or limits the plain and ordinary meaning of an audio command interface; nor do any of the passages cited by Patent Owner. 4 Patent Owner cites to pages 476–492 of Exhibit 1002. See PO Resp. 9; Ex. 1002. The subject matter Patent Owner describes, however, can be found in Exhibit 1008, the prosecution history of the parent to the ’679 patent. See Ex. 1008, 476–492. We correct the citation here. Although the Specification describes audio command interface 108 as a component of system 100 “implemented in hardware, software, or a suitable combination of hardware and software,” system 100 is an “exemplary” embodiment rather than a limiting embodiment. Ex. 1001, 2:21–24, 2:38– 45. In any event, all computer components can be implemented as hardware, software or suitable combinations of hardware and software. Similarly, although the Specification distinguishes system 100 over prior art systems requiring “voice command interoperability,” it does not identify audio command interface 108 as the component that distinguishes system 100 over the prior art. Id. at 4:45–57. Regardless, as discussed above, system 100 is described as an “exemplary” rather than a limiting embodiment. Id. at 2:21–24. Moreover, contrary to Patent Owner’s contention, the prosecution history did not limit the plain and ordinary meaning of an audio command interface. See PO Resp. 9. Although the applicant amended claims to recite an audio command interface and argued the audio command interface eliminated the need for “voice command interoperability,” the amended claims were subsequently abandoned after further rejection by the Examiner. See Ex. 1008, 477–486 (amending claims 1–12 to recite an audio command interface); id. at 416 (continued rejection of claims 1–12), id. at 304 (cancellation of claims 1–12). Finally, although the Specification discloses “system 300 provides an audio command interface that allows a person to use voice commands from mobile device 102 to access and control native applications or operating system functions,” it does not limit the audio command interface to one that receives voice commands from a mobile device. Ex. 1001, 7:36–49. First, like system 100, system 300 is an “exemplary” rather than a limiting” slip op. at 13
Patent outcomesUS 10,491,679 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,491,679 - PTAB · Dec 10, 2021 · IPR2021-01051 · APJ James A Worth · IPR · Institution
The Board instituted IPR on claims 1–10 on every asserted ground, finding a reasonable likelihood that claim 1 is anticipated by Goldfarb ’267 (Embodiment B).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition filed under [35 U.S.C. §] 311 and any response filed under [35 U.S.C. §] 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons set forth below, we determine that Petitioner has demonstrated that there is a reasonable likelihood that at least one of claims 1–10 would have been unpatentable, and we institute an inter partes review of claims 1–10 based on the grounds set forth in the Petition. B.” slip op. at 2
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Legal Standards A “prior art reference—in order to anticipate under 35 U.S.C. § 102— must not only disclose all elements of the claim within the four corners of the document, but must also disclose those elements ‘arranged as in the claim.’” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (quoting Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)). “A single prior art reference may anticipate without disclosing a feature of the claimed invention if such feature is necessarily present, or inherent, in that reference.” Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 958 (Fed. Cir. 2014). “[A]nticipation by inherent disclosure is appropriate only when the [single prior art] reference discloses prior art that must necessarily include the unstated limitation.” Transclean Corp. v. Bridgewood Servs., Inc., 290 F.3d 1364, 1373 (Fed. Cir. 2002) (citation omitted). “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Cont’l Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (internal quotation marks and citations omitted). Rather, “[t]he inherent result must inevitably result from the disclosed steps.” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir. 2012). A reference can anticipate a claim even if it “d[oes] not expressly spell out” all the limitations arranged or combined as in the claim, if a person of skill in the art, reading the reference, would “at once envisage” the claimed arrangement or combination. Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (citing In re Petering, 301 F.2d 676, 681 (CCPA 1962)).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“Claim Construction We construe each 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) (2019). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner requests that we construe the term “clip” to mean “a device that grips or holds.” Pet. 16. Citing dictionary definitions, Petitioner argues that the ordinary meaning of “clip” is “a device, typically flexible or worked by a spring, for holding an object or objects together or in place.” Id. (citing Ex. 1009; Ex. 1010). Petitioner argues that the Specification is consistent with the ordinary meaning. Id. (citing Ex. 1001, 7:35–39, 9:9–17, 27:27–39). Given the lack of dispute on this record, and in view of the Specification and the proffered dictionary definitions, for the purposes of this Decision we construe “clip” to mean “a device that grips or holds.” Ex. 1001, 7:35–39, 9:9–17; Ex. 1009; Ex. 1010.” slip op. at 13
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner argues that a person of ordinary skill in the art (POSITA) at the relevant time would have been either: (1) a mechanical or biomedical engineer with at least three years of experience in designing or developing medical devices who would, where necessary or desired, work or consult with others including a physician to develop such a medical device; or (2) an interventional cardiologist or cardiac surgeon with at least three years of experience developing and/or using medical devices in the heart, and who would, where necessary, work or consult with others including an engineer to develop such a medical device. Pet. 15–16 (citing Ex. 1003 ¶ 32). On the record at this stage of the proceeding, we adopt Petitioner’s undisputed definition of the ordinarily skilled artisan. C.” slip op. at 12
Claim construction§ 102 anticipationcites Phillips · GrahamPatents in suitUS 10,702,385 - Johnson & Johnson Surgical Vision, Inc. v. Alcon Inc.Institution deniedPTAB · Dec 10, 2021 · IPR2021-01069 · APJ Jamie T Wisz · IPR · Institution
The Board denied institution for claims 1, 2, 4, 5, 11, 12, 17, 23, 24, 26, and 27 under § 325(d), finding the same or substantially the same art was previously presented and no material …
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Under Advanced Bionics, “[p]reviously presented art includes art made of record by the Examiner, and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS), in the prosecution history of the challenged patent.” Advanced Bionics, Paper 6 at 7–8. Because Gray, which is substantially identical to Frey, and Blumenkranz were before the Office during prosecution of the ’925 patent, we find that the same or substantially the same art was previously presented and we move on to the second part of the Advanced Bionics framework.” slip op. at 15
Discretionary denialPatents in suitUS 9,456,925 - Ericsson Inc. v. Tot Power Control, S.L.Institution deniedPTAB · Dec 10, 2021 · IPR2021-01092 · APJ Lynne E Pettigrew · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–12 were obvious over Chi and Murata.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“For these reasons, based on the record before us, Petitioner has not shown sufficiently that a person of ordinary skill in the art would have understood that the combination of Chi and Murata teaches or suggests “wherein the desired signal to interference ratio target (SIRtarget) is modified at the start (403) of the outer loop unwinding, to match it to the outer loop power control in normal mode just prior to the start of the outer loop wind[-]up” when the system detects the start of unwinding. Ex. 1001, 8:59–64. For the same limitation in claim 5, Petitioner refers back to its not made a sufficient showing with respect to claim 5. Therefore, we determine the information presented does not demonstrate a reasonable likelihood that Petitioner would prevail in establishing that claims 1–12 of the ’865 patent are unpatentable under 35 U.S.C. § 103(a) for obviousness over the combination of Chi and Murata. IV. CONCLUSION After considering the parties’ evidence and arguments, we determine that the information presented does not show a reasonable likelihood that Petitioner would prevail in establishing that at least one of claims 1–12 of the ’865 patent is unpatentable based on the only ground asserted in the Petition. V. ORDER Accordingly, it is ORDERED that the Petition is denied, and no inter partes review is instituted.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“the alleged invention of the ’865 patent would have been familiar with power control mechanism for cellular systems, and specifically outer loop power control. A [person of ordinary skill in the art] would have gained knowledge of these concepts through a mixture of training and work experience, such as by having a Bachelor’s degree in electrical engineering and four years of experience; or by obtaining a Master’s degree in electrical engineering, but having only one to two years of experience; or by having no formal education but experience in cellular communications of at least eight years. Pet. 14 (citing Ex. 1003 ¶ 27). “For the purposes of this preliminary response only, Patent Owner does not dispute Petitioner’s definition of a person of ordinary skill in the art.” Prelim. Resp. 10. On the present record, we determine that Petitioner’s proposed level of ordinary skill in the art is consistent with the ’865 patent and asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Therefore, we adopt Petitioner’s proposal for purposes of deciding whether to institute inter partes review.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In an inter partes review, we apply the same claim construction standard that would be used in a civil action under 35 U.S.C. § 282(b), following the standard articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b) (2019). In applying this 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 and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–14. contends that no claim terms require express construction for purposes of applying the prior art. Pet. 14. Patent Owner submits that, at this stage of the proceeding, the Board should adopt the ordinary and customary meaning of the claim terms. Prelim. Resp. 10. 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) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentableNot shown unpatentable
“On the record before us, we agree with Patent Owner that Petitioner fails to show sufficiently that the combination of Chi and Murata teaches or suggests setting the target SIR at the start of unwinding to its value just prior to wind-up, as required by claim 1 of the ’865 patent. See id. at 36. As discussed above, Petitioner acknowledges that Chi does not explicitly teach this limitation, even if Chi may teach a desire for the target SIR to decrease in Murata on which Petitioner relies for meeting this limitation. Based on the current record, we are not persuaded that Murata teaches or suggests setting the target SIR to the value it had just prior to wind-up upon detecting the start of unwinding. Murata’s third embodiment teaches returning to the “initial state” when the system detects the end of wind-up (i.e., departure from the “shadowing state”). Ex. 1005 ¶¶ 110, 116–118. Murata explains that this initial state of operations includes starting with an “initial value of target SIR [that] is the same for all bearers (all services).” Id. ¶ 19. Murata explicitly describes “setting target quality to an initial value when high quality has been detected continuously” upon detecting departure from a shadowing state (i.e., at the start of unwinding). Id. ¶¶ 61–62 (emphasis added). Thus, it appears that Petitioner has misinterpreted Murata’s disclosure, which explicitly describes setting the target SIR at the start of unwinding to a default “initial value” rather than the value of the target SIR just prior to the start of wind-up.” slip op. at 16
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,532,865 - Tomofun, LLC v. Doggyphone LLCRehearing deniedPTAB · Dec 10, 2021 · IPR2021-00260 · APJ Patrick R Scanlon · IPR · Rehearing
The Board denied rehearing and maintained its denial of institution because Petitioner did not show the Board overlooked or misapprehended its arguments or abused its discretion.
RulingsRehearing decision- RehearingRehearing, deniedDenied
“A party dissatisfied with a decision may file a single request for rehearing, without prior authorization from the Board. The burden of showing a decision should be modified lies with the party challenging the decision. The request must specifically identify all matters the party believes the Board misapprehended or overlooked, and the place where each matter was previously addressed in a motion, an opposition, or a reply. We review our Decision under an abuse of discretion standard. 37 C.F.R. § 42.71(c). An abuse of discretion may arise if a decision is based on an erroneous interpretation of law, if a factual finding is not supported by substantial evidence, or if the decision represents an unreasonable judgment in weighing relevant factors. Star Fruits S.N.C. v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d 1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315–16 (Fed. Cir. 2000). “Substantial evidence is ‘such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.’” OSI Pharm., LLC v. Apotex” slip op. at 2
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Claim(s) Ground 35 U.S.C. § Reference(s)/Basis Challenged 1 7 102(b) Alasaarela1 2 8 103(a) Alasaarela 3 7–9 102(b) Beccaria2 4 7–9 103(a) Carelli,3 Beccaria 5 7–9 103(a) Bloksberg,4 Beccaria Pet. 4. Petitioner asserts that Alasaarela discloses the audio signal limitation for Grounds 1 and 2. Id. at 23–24, 31. Petitioner asserts that Beccaria discloses the audio signal limitation for Ground 3, and Carelli discloses the audio signal limitation for Ground 4. Id. at 36–37, 48. For Ground 5, Petitioner asserts that Bloksberg discloses the audio signal limitation. Id. at 60.” slip op. at 3
- BurdenDecided for patent owner
“As such, the Petition does not indicate with sufficient particularity that Petitioner relies on the Examiner’s finding as a basis for asserting that Bloksberg discloses the audio signal limitation and, thus, does not satisfy Petitioner’s burden on this point. See Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (“In an IPR, the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” (citing 35 U.S.C. § 312(a)(3)); see also Intelligent Bio- Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance that petitioners in the IPR proceedings the ‘evidence that supports the grounds for the challenge to each claim.’” (quoting 35 U.S.C. § 312(a)(3))). Because the Petition did not indicate clearly that it was relying on the Examiner’s finding, we could not have misapprehended or overlooked such a position. In addition, Patent Owner was not afforded a fair opportunity to dispute any reliance on the Examiner’s finding or the reasoning underlying the finding.” slip op. at 5
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“We disagree with Petitioner’s characterization of Ground 3 as being based on obviousness. Rather, the Petition clearly asserts for Ground 3 that “Claims 7-9 are anticipated under 35 U.S.C. § 102 by Beccaria[].” Pet. 4; see also id. at 32 (“Ground 3 – Claims 7–9 Are Unpatentable As Anticipated By Beccaria[]”). Petitioner’s Ground 3 analysis of claim 7 relies on Beccaria disclosing each limitation, including the audio signal limitation. Id. at 32–40. Petitioner’s Rehearing Request does not direct us to any portion of the Petition for Ground 3 that asserts any claim limitation would have been obvious over Beccaria, alone or in combination with another reference. Accordingly, we are not persuaded that we misapprehended Petitioner’s argument with respect to Beccaria.” slip op. at 9
§ 102 anticipation§ 103 obviousnessPatents in suitUS 9,723,813
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.