- Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.InstitutedPTAB · Jan 10, 2024 · IPR2023-00992 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–9, 11, and 14–17, finding a reasonable likelihood of success on § 103(a) obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to determine whether to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018); see 37 C.F.R. § 42.4(a) (2023). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–9, 11, and 14–17 in the ’081 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“2. ANALYSIS The Interim Procedure explains that “the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Petitioner provides a Sotera stipulation. Ex. 1044, 1. Specifically, Petitioner stipulates as follows: Unless the Patent Trial and Appeal Board (“PTAB”) denies or later vacates institution of IPR2023-00992, Samsung Electronics Co., Ltd., and Samsung Electronics, America, Inc. (collectively, “Samsung”) will not pursue, with respect to the ’081 patent in Case No. 2:22-cv-00423-JRG, invalidity of the challenged claims based on the grounds in IPR2023-00992, or based on any other ground that reasonably could have been raised in an IPR. Id. Patent Owner does not dispute that Petitioner provides a Sotera stipulation. See, e.g., Prelim. Sur-reply 1–4. Because Petitioner provides a Sotera stipulation, we decline to exercise our discretion under § 314(a) to deny institution in view of the Texas case. See Interim Procedure at 3, 7, 9.” slip op. at 15
- Other 314aDecided for petitioner
“3. ANALYSIS We disagree with Patent Owner that the Petition includes voluminous and excessive grounds due to “a lack of particularity” as in Adaptics. See Prelim. Resp. 1–2, 9–17; Prelim. Sur-reply 1–4. Although the Petition includes 30 grounds, each ground adequately maps the challenged claim or claims to the asserted reference or references. See Pet. 9–93. Hence, contrary to Patent Owner’s contention, the Petition does not fail to “identify the grounds and supporting evidence ‘with particularity.’” See Prelim. Resp. 13. And because each ground adequately maps the challenged claim or claims to the asserted reference or references, the concerns in Adaptics about failing to specify “the difference(s) between” the claimed invention and the primary references do not exist here. See Pet. 9–93; Adaptics, IPR2018-01596, Paper 20 at 19–21.” slip op. at 19
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field 6 The parties do not provide evidence or argument regarding objective indicia of nonobviousness. See, e.g., Pet. 9–93; Prelim. Resp. 1–17. and two years of experience related to electronic consumer product design.” Pet. 6. Petitioner also asserts that an ordinarily skilled artisan “could have also obtained similar knowledge and experience through other means.” Id. Dr. Wolfe’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶ 30. Patent Owner notes that its analysis in the Preliminary Response “has been made under” Petitioner’s description of an ordinarily skilled artisan and “would not change if minor variations were made to it.” Prelim. Resp. 3–4. Patent Owner “reserves the right to disagree with” Petitioner’s description of an ordinarily skilled artisan. Id. at 3. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’081 patent as well as the asserted prior art.” slip op. at 23
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,369,081 - Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. v. Resonant Systems, Inc.InstitutedPTAB · Jan 10, 2024 · IPR2023-00993 · APJ Michael T Cygan · IPR · Institution
The Board instituted review of claims 1–9, 11, 14–17, 19, and 20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2023). The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons given below, on this record Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–9, 11, 14–17, 19, and 20 of the ’830 patent. Accordingly, we institute an inter partes review as to claims 1–9, 11, 14–17, 19, and 20 of the ’830 patent on all asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art [“POSITA”] at the critical time “would have had a bachelor’s degree in electrical engineering, mechanical engineering, computer science, or a similar field and two years of experience related to electronic consumer product design [and the] POSITA could have also obtained similar knowledge and experience through other means.” Pet. 6 (citing Ex. 1003 ¶ 31). Patent Owner states that its analysis has been made under this proposed definition and “would not change if minor variations were made to it.” Prelim. Resp. 3. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, as it appears to be consistent with the specification of the ’830 patent and the prior art of record.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)Not reached
“invokes § 112, paragraph 6, involves a three-part inquiry: (1) there is a generic placeholder that substitutes for the term “means”; (2) the generic placeholder is modified by functional language; and (3) the limitation does not include the structure, material, or acts necessary to perform the function in question without need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015); Tri-Med v. Stryker Corp., 514 F.3d 1256, 1259–60 (Fed. Cir. 2008); Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1303–04 (Fed. Cir. 2015) (the court must “determine whether the claim nevertheless recites sufficient structure for performing the . . . function to take it outside the bounds of” § 112, paragraph 6).” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“electromagnetic coil oscillation sufficiently teaches the claimed driving component. Infra at II(D)(2)(a). Because Petitioner’s assertions and our determination would be unaffected by its proposed construction, we need not construe this term for purposes of institution. 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))). With respect to limitation [1f], a “control component that controls supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by one or more stored values,” Petitioner argues that it should be construed as a means (component) having a function (to control supply of power from the power supply to the driving component to cause the moveable component to oscillate at a frequency and an amplitude specified by one or more stored values). In our analysis, we determine limitation [1f] to be taught by Petitioner’s assertions under its alternate non-means-plus-function construction. For this reason, and because Petitioner has not provided sufficient analysis under 35 U.S.C. 112, paragraph 6, we need not construe limitation [1f] for purposes of institution. Petitioner also argues that dependent claim 4 contains the terms “the one or more operational control outputs of the control component,” “the sensors,” and “the one or more sensors,” that lack antecedent basis in claim 1 from which it depends, and therefore proposes two constructions. Pet. 9. However, Petitioner argues that these limitations are taught by its asserted combination of references under either construction. Id. at 51. We Therefore, construction is not required at this stage of the proceeding. Whether § 112’s means-plus-function provision applies to those limitations is better resolved at trial on a more developed record.” slip op. at 10
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,941,830 - PTAB · Nov 13, 2023 · IPR2023-00796 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, 7–10, and 18–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner’s Preliminary Response asks the Board to exercise its discretion to deny institution under 35 U.S.C. § 314 in view of parallel litigation. Prelim. Resp. 1–10. However, “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Petitioner made such a stipulation. Pet. 71. Hence, we decline to exercise our discretion under § 314 to deny institution in view of parallel litigation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we determine it is unnecessary to construe any terms, but we encourage the parties to directly address issues of claim construction in future briefing. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues a person of ordinary skill would have been motivated to incorporate the functionality of Fulton’s rotator in Williams’s digital array processor for several reasons. Pet. 40–44; see Pet. 36–38. Among other things, Petitioner contends Williams and Fulton describe similar devices and “a [person of ordinary skill in the art] would have had a reasonable expectation of success in making the proposed combination due to the similarities in their function and architecture.” Pet. 41. f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,260,141 - PTAB · Nov 8, 2023 · IPR2023-00810 · APJ Jeffrey W Abraham · IPR · Institution
The Board instituted IPR on claims 1–30 and all asserted grounds, finding a reasonable likelihood that claims 1–30 are obvious over Baxter.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth below, we determine the information presented in the Petition establishes a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. Accordingly, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (informative; precedential as to § III.C.5, first paragraph). We apply a two-part framework in deciding discretionary denial under § 325(d), first considering Becton, Dickinson factors (a), (b), and (d) to determine whether the same or substantially the same art or arguments were previously presented to the Office, and if so, evaluating Becton, Dickinson factors (c), (e), and (f) to determine whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, 7–11.” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had a “bachelor’s degree in electrical engineering or its equivalent and two years of experience in electrical engineering with some experience in design of power supply management systems, such as battery charging systems.” Pet. 12. Petitioner also contends that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Pet. 12 (citing Ex. 1023 ¶¶ 44–48). Patent Owner does not challenge Petitioner’s definition or offer its own. See generally, Prelim. Resp. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art. Based on our review of the ’971 patent and the prior art of record, we determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’971 patent and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that specific findings regarding ordinary skill level are not required “where the prior art itself reflects an appropriate level and a need for testimony is not shown”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner argues that the term “start control module” should be construed as “electronic switch.” Pet. 12 (citing Ex. 1023 ¶¶ 148–150). According to Petitioner, “the ‘971 Patent states that ‘the automobile start control module is the electronic switch.’” Pet. 13 (citing Ex. 1001, 2:29–30, 4:42–45, 4:26–28, 4:29–32). Patent Owner does not address claim construction in its Preliminary Response. We determine that we do not need to expressly construe any terms for purposes of this Decision. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,376,971 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00759 · APJ Richard M Lebovitz · IPR · Institution
Instituted IPR of claims 1–20, 31, and 34 on all petition grounds; the Board found a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely filed response may be deemed waived. For the reasons below, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that at least one of the claims challenged in the petition is unpatentable. See 37 C.F.R. § 42.108(c) (2023). Accordingly, we institute an inter partes review of the challenged claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner “generally concurs” that a POSITA “would have an electrical/computer engineering degree or a degree in a closely related field.” Prelim. Resp. 19. However, Patent Owner further adds that the POSITA “would have a couple of years’ experience in the ‘field of wireless communication systems” and “[m]ore particularly, . . . method[s] and system[s] for rendering applications on a wireless device.’” Id. (citing Ex. 1001, 1:13–16). The statements quoted by Patent Owner from the ’865 patent are in the section titled “Technical Field.” Ex. 1001, 1:13–16. Dr. Bederson defined the prior art as “the field of technology to which a patent is related.” Ex. 1002 ¶ 36 (emphasis added). Thus, it is not inconsistent with Dr. Bederson’s definition of the level of ordinary skill in the art to require the work experience to be in the technical field of the ’865 patent.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that it “is unaware of any ‘prior claim construction determination’ related to the ’865 patent.” Pet. 10. Petitioner states that it “believes that no express constructions of the claims are necessary to assess whether the prior art reads on the challenged claims.” Id. Petitioner, relying on Phillips, asserts that “the claims should be given their plain and ordinary meaning,” Id. Patent Owner responds that “Petitioner purports to give all claim terms their plain and ordinary meaning,” but contends that this position is “belied by the fact that Petitioner puts forth constructions for terms throughout the petition,” citing specific examples in which Petitioner is asserted to have defined or explained a claim term. Prelim. Resp. 19–20. Patent Owner states that to the extent necessary, it will address Petitioner’s proposed constructions as they arise. Id. at 20. That Petitioner has implicitly defined and explained terms at various times in the Petition is factually supported by Patent Owner’s citations to the Petition. See Prelim. Resp. 20. Nonetheless, “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“We first address the recited phrase “syntax that is wireless device generic.” The ’865 patent discloses that while “the wireless device receives the basic commands that are tailored and are specific to the wireless device based on device’s attributes and capabilities,” the “syntax of these commands is device generic.” Ex. 1001, 4:3–6. The ’865 patent explains that the rendering blocks, which perform the rendering of the application content, “operate in a way that is device specific.” Id. at 7:27–29. The ’865 patent further explains: According to one embodiment, the requested application content is received as compiled content that includes a series of basic commands representing a page description. Basic commands are precompiled by the server 230 and ready for commands are written in a syntax that is device generic regardless of the device type but whose parameters are tailored based on the wireless device capabilities. As such, precompiled basic commands are discrete low level rendering commands tailored based on the rendering capability of the client 210. Ex. 1001, 13:15–25.” slip op. at 28
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,103,865 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00758 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–33 on all petition challenges, finding a reasonable likelihood of success and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 2
Nonecites Phillips · KSR · GrahamPatents in suitUS 8,478,245 - Netflix, Inc. v. Gotv Streaming, LLCInstitutedPTAB · Nov 7, 2023 · IPR2023-00757 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR of claims 1–20 on all challenges, finding a reasonable likelihood of prevailing on at least one claim and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–20 in the ’715 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“C. Conclusion Concerning Discretionary Denial in View of Parallel Litigation Based on our assessment of compelling merits as discussed in more” slip op. at 27
- Skill levelOther
“B. Level of Ordinary Skill in the Art Factors pertinent to determining the level of ordinary skill in the art” slip op. at 28
- BurdenInstituted
“C. Analysis Based on the current record, it is highly likely that Petitioner will” slip op. at 104
Discretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,989,715 - PTAB · Oct 31, 2023 · IPR2023-00792 · APJ Jason M Repko · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 11, 12, and 16 because Roku showed a reasonable likelihood of prevailing on the petition’s obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“To institute an inter partes review, we must determine “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 discussed below, Petitioner has shown a reasonable likelihood that it would prevail with respect to all claims challenged in the Petition. Thus, we institute an inter partes review.” slip op. at 2
- PTAB / AIA Trials › Real party in interest / privityOther
“B. Real Party in Interest Patent Owner’s Mandatory Notices do not identify any real party in interest, as required by 37 C.F.R. § 42.8(b)(1). See Paper 4. Patent Owner must provide this information by filing a paper with updated mandatory notices within one month of this decision’s entry.” slip op. at 2
- Expert testimonyPetitioner expert creditedDecided for petitioner
“person of ordinary skill in the art requires knowledge in “the field of home and business security,” Petitioner’s expert, Bruce McNair, testifies that he has designed and installed home security, sensor, and alarm systems. Ex. 1003 ¶ 12. Also, Mr. McNair’s experience with wireless communication and cryptographic security systems is also relevant (see, e.g., id. ¶ 10) even if it involved more complex systems because, “to be qualified to offer expert testimony on issues from the vantage point of an ordinarily skilled artisan in a patent case, an expert must at a minimum possess ordinary skill in the art.” Kyocera, 22 F.4th at 1377–78 (emphasis added). Thus, on this record, we disagree with Patent Owner’s argument Petitioner has failed to support its Petition with the testimony of someone who possesses the knowledge and skill at least of an ordinarily skilled artisan—even under Patent Owner’s definition. See Prelim. Resp. 49.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, we determine that the differences between the two definitions do not affect our decision to institute. That is, in our analysis below, we apply Petitioner’s proposed definition, but our decision would be the same under Patent Owner’s. If the parties continue to disagree about the level of ordinary skill in the art during trial, they are encouraged to explain how the differences affect the Board’s assessment of Petitioner’s obviousness analysis.” slip op. at 5
Claim construction§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,692,340 - PTAB · Oct 23, 2023 · IPR2023-00670 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 10–14 under § 103(a) over Gladstone and Salazar, finding a reasonable likelihood that the combination teaches the claims.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Petitioner provides a Sotera stipulation. Paper 9, Attach. A.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“General Plastic does not apply here because Petitioner did not file multiple, staggered petitions “challenging the same patent and same claims” and different petitioners did not challenge the same patent at different times. See Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16–17; see also Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 at 9 (PTAB Apr. 2, 2019) (precedential). Instead, Petitioner initiated IPR2023-00669 and this proceeding on the same day by filing parallel petitions. See, e.g., Prelim. Resp. 1, 9, 13–14. Thus, these circumstances do not implicate the roadmapping concerns that General Plastic seeks to alleviate. See Gen. Plastic, IPR2016-01357, Paper 19 at 16–17.” slip op. at 18
- Parallel petitionsDecided for petitioner
“We agree with Petitioner that the circumstances here justify two petitions. See Notice 2–5. As Petitioner asserts, Petitioner “devote[d] a substantial portion” of the 14,000 word-count limit to the potential constructions of claims 10, 11, 13, and 14 under § 112, sixth paragraph, in the Petition. See id. at 3; Pet. 13–28. As Petitioner also asserts, the “presentation of separate petitions” challenging claims 1–6 and 9 in IPR2023-00669 and claims 10–14 in this proceeding “facilitates the Board’s consideration of each challenge.” See Notice 5. Under the circumstances here, conducting two related inter partes reviews will not stress the Board’s finite resources or unduly burden the Board or Patent Owner. In IPR2023-00669 and this proceeding, the prior art and the unpatentability arguments largely overlap. Specifically, Petitioner cites Gladstone and Salazar when arguing the obviousness of each challenged claim in each proceeding and additionally cites Hada in IPR2023-00669 when arguing the obviousness of claim 6. Pet. 39–86; Prelim. Resp. 13–15; IPR2023-00669, Paper 2 (Pet.) at 26–75. Also, as Patent Owner admits, the challenges in each proceeding involve similar unpatentability arguments based on Gladstone and Salazar, e.g., “essentially the same” arguments in “remarkably similar” petitions according to Patent Owner. See Pet. 49–86; Prelim. Resp. 13–15; IPR2023-00669, Paper 2 (Pet.) at 36–69. 6. CONCLUSION CONCERNING DISCRETIONARY DENIAL DUE TO MULTIPLE PETITIONS For the reasons discussed above, we decline to exercise our discretion under § 314(a) to deny institution due to multiple petitions.” slip op. at 21
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“disclosures in Gladstone and Salazar teach claim 10’s subject matter. See supra §§ IV.D.3(a)–(g). Additionally, Petitioner provides a reason with a rational underpinning as to why an ordinarily skilled artisan would have been motivated to combine Salazar’s teachings with Gladstone’s teachings in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § IV.D.3(h). Hence, Petitioner demonstrates a reasonable likelihood of proving that claim 10 is unpatentable under § 103(a) as obvious over Gladstone and Salazar.” slip op. at 56
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,708 - PTAB · Oct 23, 2023 · IPR2023-00669 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1–6 and 9 for all petition grounds, finding a reasonable likelihood that Cisco would prevail on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–6 and 9 in the ’708 patent on all challenges included in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“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.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“factors to consider when deciding whether to exercise discretion under § 314(a) to deny institution based on a follow-on petition: (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; (3) whether at the time of filing of the second petition the petitioner already received the patent owner’s preliminary response to the first petition or received the Board’s decision on whether to institute review in the first petition; (4) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; (5) whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; (6) the finite resources of the Board; and (7) the requirement under 35 U.S.C. § 316(a)(11) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Gen. Plastic, IPR2016-01357, Paper 19 at 9–10, 16.” slip op. at 17
- Parallel petitionsDenied
“Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. . . .” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,302,708
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.