- PTAB · Jun 23, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenges and granted Micron’s motion to join IPR2022-00999, with its grounds and schedule unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00999 (“999 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 999 IPR, Papers 1, 11. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 999 IPR. Petitioner represents that Samsung, the petitioner in the 999 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion.” slip op. at 2
NonePatents in suitUS 11,232,054 - PTAB · Jun 20, 2023 · IPR2023-00220 · APJ Jo-Anne M Kokoski · IPR · Institution
The Board instituted IPR on claims 1–5, 7–13, and 16, finding a reasonable likelihood of unpatentability on the asserted obviousness grounds.
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 . . . 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 (2018); see also 37 C.F.R. § 42.4 (2021). For the reasons discussed below, we determine that Petitioner establishes a reasonable likelihood of prevailing with respect to the unpatentability of at least one claim of the ’322 patent. Accordingly, we institute an inter partes review of claims 1–5, 7–13, and 16 of the ’322 patent.” slip op. at 2
- BurdenDecided for petitioner
“explain how the references are purported to be combined or how the proposed combinations allegedly teach each element of the claims” and that such “insufficient analysis does not warrant institution.” Prelim. Resp. 16. Patent Owner argues that Petitioner has “taken a number of improper shortcuts, rendering their arguments unclear and imprecise, and improperly shifting the burden of deciphering them onto Patent Owner and the Board,” and “therefore have failed in their burden of arguing with sufficient particularity.” Id. at 17. Patent Owner sets out the reasons why it believes that each of the twelve asserted grounds lack particularity. Prelim. Resp. 18–31. After considering Patent Owner’s arguments, we disagree that Petitioner’s challenges lack particularity, because, as discussed below, we understand Petitioner’s arguments and asserted combinations. Accordingly, we decline to deny the Petition for lack of sufficient particularity. See 35 U.S.C. § 312(a)(3) (“A petition . . . may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.”).” slip op. at 10
- Skill levelSkill level board ownOther
“Patent Owner argues that “the level of skill would be low,” and offers the following level of ordinary skill in the art: A bachelor’s degree in a pertinent discipline, such as mechanical or electrical engineering, physics, applied physics, or a related field. Such a person would also have had 2–4 years of experience in working with electronic displays including thermal management associated with electronic displays. Alternatively, a POSITA would have had 4–6 years of experience in the field and would have developed a similar understanding of thermal management associated with electronic displays. Prelim. Resp. 10 (citing Ex. 2004, 12–13 (Patent Owner’s Opening Claim Construction Brief in the ITC)). Patent Owner adds that a POSITA “does not necessarily have an understanding of product design issues and failure modes associated with electronic displays.” Id. at 10–11. Neither party argues that the outcome of the case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. For purposes of this Decision, we determine that a POSITA would have had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic failure modes associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes associated with electronic displays.” slip op. at 7
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner
“Construing a means-plus-function limitation includes two steps: (1) identifying the claimed function, and (2) identifying the corresponding structure in the specification of the patent that performs the function. IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1370 (Fed. Cir. 2017). constricted convection plate and the posterior surface of the electronic display,” as recited in claim 9, is a means-plus-function clause. See Williamson v. Citrix Online LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (“use of the word ‘means’ creates a presumption that § 112, ¶ 6 applies”). We also agree, on this record, with Petitioner’s identification of the claimed function as “forcing air between the constricted convection plate and the posterior surface of the electronic display.” Pet. 12. Petitioner identifies the corresponding structure as “one or more fans 52, air conditioning unit 110, and their equivalents.” Pet. 12 (citing Ex. 1001, 6:65–67, 7:38–54; Ex. 1002 ¶¶ 76–77). We agree with Petitioner that the ’322 patent teaches that the corresponding structure is one or more fans or an air conditioning unit. The Specification repeatedly states that one or more fans are used to draw air between the posterior surface and the constricted convection plate. See Ex. 1001, 2:67–3:2 (“one or more fans may be used to force air” between the constricted convection plate and the posterior surface), 6:2–7 (“In FIG. 5B, one or more fans 52 are used to draw ambient air between the posterior display surface 22 and the constricted convection plate 30. In FIG. 5C, one or more fans 52 are used to force ambient air between the posterior display surface 22 and the constrict convection plate 30.”), 6:60–67 (identifying “one or more fans” as a means for forcing air within the system and increasing the speed at which the air travels), 7:45–48 (“fan 52 may be associated with the entrance opening 62 and may force air” between the constricted convection plate and the posterior surface). The Specification also teaches that, in Figure 5E, “an air conditioning unit 110 is used to both cool the air and to force the cooled air” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,173,322 - PTAB · Jun 20, 2023 · IPR2023-00199 · APJ Minn Chung · IPR · Institution
The Board instituted inter partes review of claims 1, 4, 7, and 8 on all six asserted § 103(a) grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review is authorized 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.” After considering the information presented in the Petition and Preliminary Response, we determine that the information presented establishes that there is a reasonable likelihood that Petitioner would prevail in showing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims of the ’595 patent, based on all grounds raised in the Petition.” slip op. at 2
- BurdenDecided for petitioner
“After considering Patent Owner’s arguments, we disagree that Petitioner’s challenges lack particularity, because, as discussed below, we understand Petitioner’s arguments and asserted combinations. Accordingly, we decline to deny the Petition for lack of sufficient particularity. See 35 U.S.C. § 312(a)(3) (“A petition . . . may be considered only if . . . the petition identifies, in writing and with particularity, each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim . . .”).” slip op. at 14
- Skill levelSkill level board ownDecided for patent owner
“Neither party argues that the outcome of the case would differ based on our adoption of any particular definition of the level of ordinary skill in the art. For purposes of this Decision, based on our review of the ’595 patent, the types of problems and solutions described in the ’595 patent, and cited prior art, we determine that a POSITA would have had a bachelor’s degree in a pertinent discipline, such as mechanical engineering, physics, applied physics, product design, or a related field, and would also have had 2–4 years of experience working with electronic displays, including the thermal management, product design issues, and failure modes, associated with such displays, or 5–7 years of experience in the field working with electronic displays and would have developed a similar understanding of thermal management, product design issues, and failure modes, associated with electronic displays.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“For purposes of this Decision, we need not construe these terms because the parties do not identify any disputed issue material to the outcome of this Decision that would turn on the constructions. 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 13
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,854,595 - PTAB · Jun 20, 2023 · IPR2023-00254 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on all challenged claims and all petition grounds, finding a reasonable likelihood that claims 1–3, 5–9, 11–13, 15–18, and 20 are unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4. Upon consideration of the contentions and the evidence of record before us, we conclude Petitioner has shown a reasonable likelihood that it would prevail in establishing unpatentability of at least one challenged claim of the ’740 patent. Accordingly, we institute an inter partes review of all challenged claims of the ’740 patent on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“error by the Office” in its prior consideration of that art or arguments. Id. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether petitioner has demonstrated a material error by the Office. Id. “At bottom, this framework reflects a commitment to defer to previous Office evaluations of the evidence of record unless material error is shown.” Id. at 9.” slip op. at 65
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not in its Preliminary Response stated its assertion on the level of ordinary skill in the art. Patent Owner also has not disputed Petitioner’s assertion. At this preliminary stage and on this record, we adopt Petitioner’s articulation, both alternatives, as the level of ordinary skill in the art. They appear consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“However, because Patent Owner does not dispute, at this stage, that what Petitioner in its substantive analysis has identified as a closed loop in Karppanen and as a closed loop in Yare are closed loops as recited in the challenged claims, we need not construe “closed loop” for purposes of this Decision. Neither party has proposed an express construction for any other term. We find that no express claim construction of any claim term is necessary at this stage of the proceeding. C.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,506,740 - PTAB · Jun 20, 2023 · IPR2023-00221 · APJ Jameson Lee · IPR · Institution
The Board instituted IPR on claims 1–15 based on both § 103 grounds, finding a reasonable likelihood that the challenged claims would be shown unpatentable.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner has not in its Preliminary Response stated its assertion on the level of ordinary skill in the art. Patent Owner also has not disputed Petitioner’s assertion. At this preliminary stage and on this record, we adopt Petitioner’s articulation, both alternatives, as the level of ordinary skill in the art. They appear consistent with what is reflected by the content of the applied prior art references. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). B.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“However, because Patent Owner does not dispute at this stage that what Petitioner, in its substantive analysis, has identified as a closed loop in Karppanen and Yare is a closed loop as recited in the challenged claims, we need not construe “closed loop” for purposes of this Decision. Neither party proposed an express construction for any other term. We find that no express claim construction of any claim term is necessary at this stage of the proceeding. C.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner explains that “[one of ordinary skill in the art] would have recognized that the problem of reflectance at the boundaries may exist in Karppanen’s system as well, due to the ducting 66, i.e., the air gap between the front plate 46 and the display element 26.” Id. at 59 (citing Ex. 1002 ¶ 132). Petitioner further explains that the benefits to be achieved by making the modification to include a polarizer is to minimize reflectance at the gap and also to reduce the need for any anti-reflective coating. Id. at 62. Petitioner presents another motivation for one with ordinary skill in the art to modify Karppanen as discussed above in light of Larson. It is based on Larson’s description that auxiliary polarizer 20 is an absorbing polarizer and that the auxiliary polarizer minimizes attenuation of light ¶ 133). Petitioner asserts that “[one with ordinary skill in the art] would have also recognized that an absorbing polarizer can absorb at least some polarizations of the ambient light, such as sunlight, which can help improve the contrast and reduce the heating of the display caused by the sunlight.” Id. at 62 (citing Ex. 1002 ¶ 136). Petitioner further explains that one with ordinary skill in the art would have understood the proposed combination as use of known techniques (anti-reflective materials and/or polarizer) to improve a similar apparatus in the same way to yield predictable results, and would have expected the combination to succeed. Id. at 62–63 (citing Ex. 1002 ¶¶ 137–138). With respect to the foregoing, Patent Owner does not present counter-” slip op. at 32
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“To the extent there is any praise in the two emails (Exhibits 2001 and 2003), no specific product has been identified and Patent Owner has not shown that any of its products include all the features of any challenged claim. Nor does either email specifically identify a technical feature that is the subject of any praise or recognition. Although the emails do express an interest in outdoor displays, that general category of product, i.e., outdoor, does not identify any specific technical feature which has impressed Samsung SDS America. Further, none of the challenged claims has an “outdoor” requirement and each challenged claim includes additional features not referred to in either the Exhibit 2001 email or the Exhibit 2003 email. Thus, no claim has been shown by Patent Owner as coextensive with any of its products, even assuming that a specific product was praised by Samsung SDS America through the two emails. Accordingly, Patent Owner has not shown sufficient nexus between Exhibits 2001–2003 and any challenged claim. Patent Owner also asserts that Petitioner should have first addressed the Exhibit 2001 email, the Exhibit 2003 email, and Exhibit 2002, as objective evidence of nonobvious 11 Patent Owner refers to the Exhibit 2003 email as including language referring to “discussion relative to all weather, outdoor, daylight viewable LCD products” (Prelim. Resp. 16), but we see no such language in the email. discussed above on a lack of sufficient showing of nexus, Exhibits 2001– 2003 are too general and vague to impose on Petitioner an obligation to address them in the Petition, in the first instance, as objective evidence of nonobviousness. Thus, based on the record presented, we decline to impose such an obligation on Petitioner. For the foregoing reasons, we determine that the objective evidence of nonobviousness is very weak. F.” slip op. at 71
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,013,142 - Apple Inc. v. Spacetime3d, Inc.InstitutedPTAB · Jun 16, 2023 · IPR2023-00242 · APJ Hubert C Lorin · IPR · Institution
The Board instituted IPR on claims 1–18 and all petitioned grounds after finding a reasonable likelihood that Apple would prevail on its § 103 challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“However, if Petitioner has provided a Sotera4 stipulation, we will not discretionarily deny institution under § 314(a) in view of a District Court action. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director Memo”), at 3, 7, 9.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“The Board uses a two-part framework for evaluating arguments under § 325(d): (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”). “[T]he Becton, Dickinson factors provide useful insight into how to apply the framework under 35 U.S.C. § 325(d).” Id. at 9 (footnote omitted). The non-exclusive Becton, Dickinson factors are: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”). Becton, Dickinson factors (a), (b), and (d) relate to the first part of the Advanced Bionics framework (whether the same or substantially the same art or arguments previously were presented to the Office), and Becton, Dickinson factors (c), (e), and (f) relate to the second part of that framework (previous Office error). Advanced Bionics, Paper 6 at 9–11. Only if the same or substantially the same art or arguments were previously presented to the Office do we then consider whether the petitioner has demonstrated a material error by the Office. Id.” slip op. at 13
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“the current record, Petitioner’s contentions, detailed above and supported by the Fuchs Decl., are sufficient to show that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of claims 1–18 under Grounds I and II. III. CONCLUSION For the foregoing reasons, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of claims 1–18 of the ’048 patent. Accordingly, we grant the Petition and institute an inter partes review of the ’048 patent. Because a decision to institute is “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition,” PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 & n.2 (Fed. Cir. 2018) (citing SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018) and corresponding USPTO Guidance, https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/guidance-impact-sas-aia-trial (Apr. 26, 2018)), and because we have determined that at least one ground set forth in the Petition satisfies the threshold for institution, trial is instituted on the proposed grounds. IV. ORDER It is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–18 of the ’048 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 55
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends: The range of qualifications for a POSITA [person of ordinary skill in the art] would have included a bachelor’s degree in computer science or a comparable field and at least two years of professional experience working with 2D and 3D graphical user interfaces. Additional years of experience could substitute for an advanced-level degree (and vice versa). Pet. 13 (citing Fuchs Decl. ¶¶ 28–29) (citations omitted). Patent Owner states that “at least the inventor of the ’048 Patent, E. Eddie Bakhash, is a 6 We recognize that “the strength of each of the Graham factors must be weighed in every case and must be weighted en route to the final determination of obviousness or non-obviousness.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1328 (Fed. Cir. 2016). This includes objective indicia of nonobviousness. To that end, we evaluate Patent Owner’s objective indicia in Section II.I below, and find that evidence unpersuasive on the preliminary record. POSITA, and reserves the right to further address this issue at a later point in time if necessary.” Prelim. Resp. 18–19. Petitioner’s proposed definition of a person of ordinary skill in the art appears reasonable, and we adopt that definition for our analysis in this decision.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,881,048 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- BurdenInstitutedInstituted
“3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,578,045 - Micron Technology, Inc. v. Katana Silicon Technologies LLCInstitution deniedPTAB · Jun 14, 2023 · IPR2023-00105 · APJ Minn Chung · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of proving any claim unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), institution of an inter partes review may not be authorized unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and the Preliminary Response, we conclude that the information presented does not show there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any challenged claim of the ’013 patent. Accordingly, we do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Although the proposals for the level of skill in the art by the parties’ declarants have differences in wording, we do not find the proposals to be materially different. For purposes of this Decision, we find no meaningful differences between the parties’ respective definitions that would materially alter the outcome of this Decision. Thus, although we do not find the parties’ proposals for the level of skill in the art to be materially different, for purposes of this Decision, based on our review of the ’013 patent, the types of problems and solutions described in the ’013 patent, and cited prior art, we adopt and apply Petitioner’s definition of the level of ordinary skill in the art.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“understand the claim term “a support pattern, provided on the second surface” recited in all challenged independent claims to mean a “support section that is part of a wiring pattern formed on the substrate’s second surface.” Pet. 14 (citing Ex. 1002 ¶¶ 119–121, 133–134). At this time, Patent Owner does not dispute Petitioner’s proposed construction of “a support pattern, provided on the second surface.” See generally Prelim. Resp. For purposes of this Decision, we need not construe this term because the parties do not identify any material issue that would turn on the construction. 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 14
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“As discussed above in Section II.C, under the heading “SUMMARY OF THE INVENTION,” the ’013 patent states that “[t]he object of the present invention is to provide a wiring substrate, a semiconductor device, and a package stack semiconductor device, all with improved reliability of connection by suppressing occurrence of inadequate electrical connection.” Ex. 1001, 3:60–64 (emphases added). The ’013 patent further states that A wiring substrate of the present invention, in order to achieve the foregoing object, includes an insulating substrate, a terminal section for wire bonding or flip-chip connection and a support pattern, provided on a surface of the other side of the surface where the terminal section is provided, and on a position corresponding to the terminal section, for improving reliability of connection of wire bonding. Therefore, this structure can suppress deformation of the insulating substrate by the support pattern, even when the terminal section is pressed in wire bonding or other connection methods. As a result, reliability of connection in wire bonding or other connection methods, can be improved than conventionally. Id. at 3:65–4:11 (emphases added). In view of these disclosures in the Specification and the express recitation “for improving wire bonding connection” in the claim, we determine that the limitation reciting “support pattern . . . for improving wire bonding connection” requires the recited “support pattern” to be capable of “improving wire bonding connection.” See GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1371 (Fed. Cir. 2016) (“When a patent . . . describes the features of the ‘present invention’ as a whole, this description limits the scope of the invention.” (quoting Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007))); see also C.R. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 864 (Fed. Cir. 2004) (“Statements that describe the invention as a whole are more likely to be found in certain sections of the specification, such as the Summary of the Invention.”).” slip op. at 43
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 6,731,013 - Netflix, Inc v. Robocast, Inc.Institution deniedPTAB · Jun 9, 2023 · IPR2023-00182 · APJ Patrick M Boucher · IPR · Institution
The Board denied institution because Netflix did not show a reasonable likelihood that claims 1–2, 7–9, 11–12, 15, and 26–28 were unpatentable over the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we deny the Petition and do not institute an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Both parties support their proposals with testimony by their respective experts. See Ex. 1003 ¶ 41–44; Ex. 2017 ¶ 28. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 14
- Prior constructionPrior construction adoptedDecided for patent owner
“previously construed certain terms for the ’451 patent claims, i.e., for an ancestor of the subject ’819 patent that shares a substantially common written description. Pet. 18–19; Prelim. Resp. 6–8 (citing Ex. 1014 (claim construction order in cases involving Microsoft and Apple)). Patent Owner advocates that we adopt such prior constructions in this proceeding, and Petitioner states that it “does not necessarily agree that the prior district court constructions are correct, but the constructions are nonetheless satisfied by [the asserted] Grounds.” Prelim. Resp. 6–8; Pet. 18–19. Patent Owner also states that the Board panel in the 1125 IPR adopted the same constructions for “show structure of nodes,” “node,” and “interactively variable duration information,” which Patent Owner asserts also appear in relevant claims of the ’819 patent. Prelim. Resp. 8. Since both parties purport to apply these constructions, we do as well for purposes of this Decision. See 37 C.F.R. § 42.100(b) (“Any prior claim construction determination concerning a term of the claim in a civil action, or a proceeding before the International Trade Commission, that is timely made of record in the inter partes review proceeding will be considered.”). We have thus reviewed the court’s claimconstruction order, and adopt its construction of the following terms for purposes of this Decision. First, we construe “node,” which is recited in multiple claims, as “an identifier of a resource that includes an address to the resource and the duration for which the resource’s content is to be presented by default.” See Ex. 1014, 16–17; Pet. 18; Prelim. Resp. 7. Second, we construe “show structure of nodes,” which is recited in challenged independent claims 1 and 26, as “a structure that is arranged for the display of content by specifying one or more paths through a plurality of nodes. The show structure of nodes specifies the duration of any display,” but there is no durational requirement separate from the construction of “node.” See Ex. 1014, 2–13; Pet. 18; Prelim. Resp. 6–7. Third, we construe “interactively variable duration information,” which is recited in challenged independent claims 1 and 26, as “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22–23; Pet. 19; Prelim. Resp. 7–8.” slip op. at 15
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“With this understanding of Escobar, we agree with Patent Owner’s argument. That is, independent claim 1 defines a method in which presentation of the “advertisement content” occurs in connection with automatic presentation of other content, namely “content . . . presented . . . in accordance with said show structure.” Ex. 1001, 17:53–56, 17:65–67. Escobar’s two-level gateway structure is not consistent with this requirement, and neither Petitioner nor Dr. Houh provides sufficient explanation of how Escobar’s advertisement insertions are otherwise presented in connection with the automatic presentation of the objects/assets. Because Petitioner does not sufficiently show that this aspect of the claim is disclosed by, or would have been obvious over, Escobar, we conclude that Petitioner does not demonstrate a reasonable likelihood of prevailing on its challenge of independent claim 1 as unpatentable under 35 U.S.C. § 103(a) over Escobar alone or over Escobar in combination with Rege.” slip op. at 34
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,606,819 - PTAB · May 24, 2023 · IPR2023-00120 · APJ Larry J Hume · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood that Google would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.4. Having reviewed the parties’ papers and the evidence of record, we determine that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim. Accordingly, we institute an inter partes review of all challenged claims 1 through 24 of the ’092 patent, based on the grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage, “Patent Owner agrees to Petitioner’s proffered level of ordinary skill in the art because it comports with the technology and claims of the ’092 Patent as well as the asserted prior art.” See Prelim. Resp. 11. For purposes of this Decision, we adopt Petitioner’s unopposed position as to the level of ordinary skill in the art at the time of the claimed invention, as articulated above. We are satisfied that Petitioner’s proposed definition generally comports with the level of skill necessary to understand and implement the teachings of the ’092 patent and the asserted prior art. This definition is also supported by the testimony of Dr. Franzon (see Ex. 1004 ¶¶ 34–36), as well as a declaration from Patent Owner’s declarant, Dr. Hassan Zeino, Ph.D. See Ex. 2001 ¶ 24 (“Zeino Declaration”).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner
“above that Heil’s configuration does not meet the limitation “dedicated I/O channel” because of other types of data purportedly being communicated over the channel, we infer from Patent Owner’s assertion and Dr. Zeino’s statement that the second claim construction issue articulated above is relevant, i.e., whether a “dedicated I/O channel” should be interpreted as a channel that is used exclusively for a certain type of data, i.e., I/O requests. We find that, in contrast to Patent Owner’s and Dr. Zeino’s assertions, the ʼ092 patent provides a somewhat broader description of elements 121 and 122, to wit: “The PC data storage system 131 services a plurality of channel attached host processors 111, 112 using channels 121, 122, and a plurality of network attached host processors 106, 107. . . .” Ex. 1001, 5:10–13 (omitting Dr. Zeino’s proffered words “dedicated I/O” (Ex. 2001 ¶ 27 (emphasis added)). The ʼ092 patent goes on to later describe channels 121 and 122 as “I/O channels.” Ex. 1001, 5:51. We have reviewed the ʼ092 patent and prosecution history, and find no further intrinsic evidence of record, i.e., original disclosure or arguments presented during prosecution, that would provide additional context for the “dedicated I/O channel” limitation. Nonetheless, for purposes of this Decision, we need not determine whether a “dedicated I/O channel” can transmit data other than I/O requests because, as discussed in Section III.E.1 below, Petitioner shows sufficiently that Heil discloses a “dedicated I/O channel” even under the claim construction inferred from Patent Owner’s argument. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Matal, 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’” (Fed. Cir. 1999))). Thus, based on the current record and purposes of this Decision, we preliminarily construe a “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Under our preliminary claim construction of the phrase “dedicated I/O channel” adopted above, i.e., we interpret “dedicated I/O channel” as a channel that is used exclusively for a certain type of data, i.e., I/O requests, thus encompassing load sharing configurations that share the I/O channel between multiple CPUs and I/O peripheral devices for communication of I/O requests. See § III.C, supra. Patent Owner’s declarant states that Petitioner “maps path 115 to 116.5 to 102 as the dedicated I/O channel of element [1.a]” (Ex. 2001 ¶ 17), and opines “[t]his mapping [cannot be made . . . because] Heil specifically notes that the indicated path (i.e., the path including elements 115, 116.5 and 102) is not dedicated” because Figure 1 of Heil shows “one HBA services the I/O requests from CPU1 and CPU2 100” (id.), thus providing “the load sharing benefits of allowing a plurality of HBAs to service the local and remote I/O requests of CPU 1 and CPU 2 100.” Prelim. Resp. at 14. Relying on the Declaration of Dr. Zeino, Patent Owner states “[t]he channel used by the PCI bus bridge 115 and PCI bus 116.5 is used for other communications besides I/O requests, for example arbitrary communications among peer CPUs (Heil, Col. 8, lines 8–18) and thus the PCI bus bridge 115 and PCI bus 116.5 simply cannot be and cannot serve as a dedicated I/O channel.” Prelim. Resp. 15. “[T]he the only path to the Fibre Channel backbone 121 from the host system CPUs 100 and remote system CPUs 135 is over PCI bus bridge 115 and PCI bus 116.5, so PCI bus bridge 115 and PCI bus 116.5 are also used to allow a channel or path for each CPU to be connected to peer CPU’s.” Id. at 16. cited by Patent Owner, below: In the present invention, each CPU within Node 150, Nodes 152, and Node N 151 does [sic] not have direct connectivity to a peer CPU within another node. For example, CPU 1 100 does not communicate directly with CPU N+1 135 in Node N 151. Instead, Node 150, Nodes 152, and Node N 151 are connected via a network communications medium. In the preferred embodiment, a Fibre Channel backbone 121 allows each CPU to be connected to peer CPU’s. One skilled in the art will recognize all node-to-node inter-processor communication can occur on this Fibre Channel backbone 121. Alternatively, the Fibre Channel backbone 121 can be used exclusively for storage communications and inter-processor communications can occur over a separate network.” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 10,154,092
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.