- PTAB · Nov 21, 2023 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1–9, 12, and 14–20 would have been obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, Petitioner has shown sufficiently that Morris and Ray, in combination, teach or suggest each element of independent claim 1. Petitioner has also sufficiently shown that one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray as proposed and would have had a reasonable expectation of success in doing so. Accordingly, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Morris and Ray.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Morris and Ray by adding several of Ray’s features to Morris’ treadmill, including Ray’s camera, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed. Pet. 16–18. Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing user motivation would have motivated the combination) (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25). At this stage, we are persuaded that Petitioner has made a sufficient showing that one of ordinary skill in the art would have been motivated to combine Morris and Ray with a reasonable expectation of success.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions and states that the “claims . . . have not been construed by any courts as of the filing of th[e] Petition.” Pet. 15 (citing Ex. 1002 ¶¶ 29–30). At this stage, Patent Owner does not address the construction of any term or phrase. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“steppers, ellipticals) or in a similar field.” Pet. 15 (citing Ex. 1002 ¶¶ 31– 34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. At this stage of the proceeding and on this record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’227 patent.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,032,227 - Google LLC v. DDC Technology, LLCInstitution deniedPTAB · Oct 26, 2023 · IPR2023-00710 · APJ Sheila F Mcshane · IPR · Institution
Institution of inter partes review of claims 1–6 and 8–33 was denied because Patent Owner effectively disclaimed all challenged claims.
RulingsInstitution decision- Adverse judgmentAdverse judgmentDenied
“claims challenged in a petition, no inter partes review is instituted. See Gen. Elec. Co. v. United Techs. Co., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential); see also 37 C.F.R. § 42.107(e) (“The patent owner may file a statutory disclaimer under 35 U.S.C. [§] 253(a) in compliance with § 1.321(a) of this chapter, disclaiming one or more claims in the patent. No inter partes review will be instituted based on disclaimed claims.”).” slip op. at 2
NonePatents in suitUS 11,093,000 - Cerebras Systems Inc. v. Rex Computing, IncNo claims unpatentablePTAB · Oct 11, 2023 · IPR2022-00741 · APJ Michael T Cygan · IPR · Final written decision
Claims 1–19 were not shown unpatentable under § 103 because the cited combinations failed to teach required router retention, scratchpad memory, or optimal square-versus-linear tile assignment limitations.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“the time the ’975 patent was filed. Pet. 6. Relying upon the Conte Declaration, Petitioner asserts a person of ordinary skill in the art would have had “a Bachelor of Science degree in electrical engineering, computer engineering, or a related subject matter, plus at least two years of professional experience in the field of microprocessor design or a similar field . . . and more experience would compensate for less formal education, and vice versa.” Id. (citing Ex. 1002 ¶¶ 27–30). Patent Owner applies this 2 Patent Owner does not identify any secondary considerations to be considered. assessment in its Response. Resp. 8. Based on the fully developed record, we accept the assessment offered by Petitioner because it is supported by the Conte Declaration and is consistent with the ’975 patent and the asserted prior art.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“[W]e need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy.’” Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). We determine that no constructions are required for the above-disputed terms. slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Specification disavowal / 'present invention' languageTerm construed patent owner constructionDecided for patent owner
“above-described manner to store data. But Dr. Conte’s direct testimony does not address other statements in the ’975 patent specification that describe the scratchpad memory as an alternative to a cache. See Ex. 1001, 8:27–33 (“each of the cores includes a scratchpad memory . . . . As a result, conventional L-level caches may not be used in the architecture 299 because the scratchpad memories . . . provide data storage”); see also id. at 3:21–4:35 (describing drawbacks of prior art architectures that rely on caches), 5:14–20 (stating that each core may include a scratchpad memory instead of a cache). As Dr. Bagherzadeh stated, “Dr. Conte never reconciled [his] opinion with the ’975 Patent’s disclosure, which, as I described, connects the concept of using a scratchpad memory to a cache-less architecture.” Ex. 2001 ¶ 92 (citing Ex. 1001 Fig. 3). Dr. Conte’s deposition testimony did not clarify this issue, stating that the issue of cacheless architecture was “disconnected” from whether a microprocessor has a scratchpad. Ex. 2002, 40:10–15. The ’975 patent specification’s description of a scratchpad memory module as an alternative to cache memory is evidence that an ordinary artisan, upon reading the entirety of the ’975 patent, would not have considered the scope of the claimed scratchpad memory to include a cache memory. Dr. Conte has relied upon the ’975 patent specification for general properties seemingly common to both caches and scratchpad memory, but has not explained why the ’975 patent specification’s statements distinguishing a scratchpad memory from a cache should not limit the scope of the claimed “scratchpad memory.” As a result, Dr. Conte’s testimony does not significantly assist in construing “scratchpad memory” in any manner relevant to the pertinent issue; i.e., whether it may be taught by a prior art cache memory.” slip op. at 30
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“data “occurs in the router’s input buffer” (Pet. Reply 10 (emphasis added)), but Petitioner does not support this assertion with analysis or evidence. To the contrary, Petitioner has clarified that the “input” on which words wait is “the input of the processor,” not the router. Pet. Reply 12. Claim 1 requires that a router must be operable to retain such data (limitation [1g]), and that the processor cores are distinct from the routers (limitation [1a]). Thus, to the extent that MIT2002 teaches data waiting at the input of the processor, Petitioner has not pointed to evidence or reasoning persuasively showing that the claimed router is operable to retain a data packet, even if a buffer at the input of the processor is able to do so. Instead, Petitioner primarily relies on our preliminary determination, and on Patent Owner’s lack of argument to the contrary. Id. at 11–12. Neither of these act to satisfy Petitioner’s burden to show that MIT2002, in combination with the other applied references, teaches a router operable to retain data packets in the event of a traffic condition. Consequently, we are not persuaded that retention of data in the Raw system occurs at the router’s input buffer. For the above described reasons, we determine that Petitioner has not shown by a preponderance of evidence that the combined teachings of the applied references of this ground teach or suggest the “each router is operable to retain a data packet in the event of a traffic condition” limitation of [1g]. Accordingly, Petitioner has not demonstrated by a preponderance of the evidence that the subject matter of claim 1 would have been obvious.” slip op. at 24
Patent outcomesUS 10,355,975 not shown unpatentableClaim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,355,975 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Sep 1, 2023 · IPR2022-00650 · APJ Brian D Range · IPR · Final written decision
Claims 1–3, 5–8, 11–14, and 16 are unpatentable over the asserted anticipation and obviousness grounds.
RulingsFinal written decision- Additional discoveryAdditional discovery, deniedDenied
“To succeed, a motion to submit supplemental information pursuant to 37 C.F.R. § 42.123(b) must meet two requirements. First, the motion must show why the supplemental information reasonably could not have been obtained earlier. 37 C.F.R. § 42.123(b). Second, the motion must show that consideration of the supplemental information would be in the interest of justice. Id. As we explain below, Patent Owner’s motion fails to meet either requirement.” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Other
“B. Patent Owner’s Objections to Petitioner’s Demonstrative Slides Patent Owner objects to a number of Petitioner’s demonstratives for oral argument because, for example, the demonstratives constitute evidence that Petitioner did not reference or discuss in a prior paper. See, e.g., Paper 29 passim. We have considered the objections. Demonstratives for oral argument, however, are not evidence. Paper 24, 2 (Order Setting Oral Argument); see also Consolidated Trial Practice Guide 84, available at https://www.uspto.gov/TrialPracticeGuideConsolidated (“Demonstrative exhibits used at the final hearing are aids to oral argument and not evidence.”). We do not rely on demonstratives as evidence in our decision making; instead, we rely solely on the arguments properly presented in the parties’ briefs and the evidence of record. Because demonstratives do not affect our decision making, Patent Owner’s objections to the demonstratives likewise do not affect our decision making. We dismiss Patent Owner’s objections as moot.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennas used in RFID devices versus developing antennas used in RFID devices for inductive coupling). The specification of the ’304 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be used by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Id. Thus, we are not persuaded that the level of ordinary skill should be confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.9” slip op. at 18
- Expert testimonyPetitioner expert creditedDecided for petitioner
“F. Dr. van der Weide’s Testimony Patent Owner argues that we should not give substantial weight to the testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. PO Resp. 45–51. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. Id. at 45–46 (citing Ex. 2003 ¶ 96). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. at 45. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 25–27 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 19
Patent outcomesUS 9,633,304 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,633,304 - Current Lighting Solutions, LLC D/B/A GE Current v. Jiaxing Super Lighting Electric Appliance Co., Ltd.Institution deniedPTAB · Aug 16, 2023 · IPR2023-00269 · APJ Neil T Powell · IPR · Institution
The Board denied institution on all challenged claims because the Li and Ono combinations did not establish a reasonable likelihood of showing the claimed component placement obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In sum, weighing the parties’ arguments and evidence, we find Petitioner has not persuasively addressed limitation 1[h]’s requirement for a “resistor which is positioned closest to the end wall” or limitation 30[h]’s requirement for a “capacitor which is positioned closest to the end wall.” b) Conclusion for Ground 1 Because Petitioner does not provide sufficiently persuasive arguments and evidence addressing limitations 1[h] and 30[h], we find Petitioner has not demonstrated a reasonable likelihood of establishing obviousness of independent claims 1 and 30. Additionally, Petitioner’s arguments and evidence addressing dependent claims 2, 4–6, 31, 37, 88, and 90 do not cure the deficiencies in Petitioner’s challenge to independent claims 1 and 30. Pet. 36–43, 47–48. Accordingly, Petitioner also fails to demonstrate a reasonable likelihood of prevailing on its challenge of dependent claims 2, 4–6, 31, 37, 88, and 90.” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as 1-2 years of academic or industry experience in LED lighting design.” Pet. 6 (citing Ex. 1003 ¶ 21). Petitioner also asserts that an ordinary artisan would have had “knowledge of LEDs and related technology for driving LEDs” and “would have been familiar with the field of technology” related to fluorescent lamps, their pre-heat process, increasing popularity of LED lamps, a need for heat dissipation and management in LED lamps, and end-cap openings used to lessen internal heat or pressure. Id. (citing id. at 6–11; Ex. 1002 ¶ 21). At this stage, Patent Owner does not address the level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’989 patent. See also Ex. 1003 ¶ 21.” slip op. at 10
- Expert testimonyPetitioner expert discountedDecided for patent owner
“asserting that it would have been obvious in view of Li and Ono to locate varistor R1 or capacitor C1 closest to an end wall. Petitioner argues that a person of ordinary skill in the art would have understood heat-dissipation benefits of locating a resistor or capacitor closest to an end wall. Pet. 36, 47. In support of this, Petitioner relies on Dr. Ackley, who testifies as follows: a [person of ordinary skill in the art] would have understood that resistors are heat generating circuit elements. Therefore, it would have been obvious for a [person of ordinary skill in the art] to place the resistor closest to the end cap such that heat would be efficiently dissipated through heat dissipating functions in the end caps, such as ventilating holes. This placement would cool the resistor as well as minimize the effects of the resistor heating up other components on the PCB and improve the lifespan of the LED lamp. As an alternative to, or in addition to ventilation holes, the PCB could be placed in direct contact with the end cap. A [person of ordinary skill in the art] would have understood that heat is transferred to the end cap through this direct connection and would have been conducted out of the LED lamp to the outside environment directly through the end wall or through the conducting pins. Thus, it would have been obvious to a [person of ordinary skill in the art] to locate the (heat generating) resistor closest to the end cap. Ex. 1003 ¶ 100; see also id. ¶ 122 (similar testimony addressing placing capacitor closest to end wall). Patent Owner suggests that this testimony stems from improper hindsight based on the ’989 patent’s disclosure of heat-dissipation benefits of the claimed component locations. Prelim. Resp. 33–34. We determine that Petitioner’s rationale is insufficiently supported. Dr. Ackley provides no supporting evidence to corroborate his opinion. See Ex. 1003 ¶¶ 100, 122. And, as noted above, the ’989 patent describes LED tube lamp embodiments with a capacitor or resistor closest to an opening in the end wall, explaining that “the closest element will have better heat dissipation effect and this makes the LED tube lamp operate normally.” Id. at 3:55–57, 4:19–40. As a result, we are concerned that Petitioner’s rationale suffers from improper hindsight bias. See KSR, 550 U.S. at 421 (“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.”); Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1068 (Fed. Cir. 2018) (“We have observed that the prejudice of hindsight bias often overlooks that the genius of invention is often a combination of known elements which in hindsight seems preordained.” (internal quotation marks omitted)). Accordingly, we do not find Dr. Ackley’s testimony to be sufficient to support Petitioner’s contention that a person of ordinary skill in the art would have recognized the heat-dissipation advantages of Patent Owner’s claimed arrangement.” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot shown unpatentableMotivation not foundNot shown unpatentable
“sufficiently its arguments about the locations of Li’s varistor R1 and capacitor C1 relative to an end wall. Petitioner and Dr. Ackley assume certain spatial relationships based on Li’s Figure 6 and related disclosures. Pet. 34–35, 45–46; Ex. 1003 ¶¶ 98, 120. But, consistent with Patent Owner’s argument, Li’s Figure 6 is a “schematic circuit diagram,” not a representation of lamp components’ spatial arrangement. Ex. 1005 ¶ 41; Prelim. Resp. 30–31. In addition to Figure 6, Petitioner and Dr. Ackley cite Li’s disclosure that “the filter capacitor C1 and the varistor R1 are connected in parallel between the AC input terminals B3 and B4 of the full-bridge rectifier BR1, wherein the varistor R1 holds the input voltage of the full-bridge rectifier BR1 at a predetermined level by suppressing abnormal overvoltage in the circuit.” Ex. 1005 ¶ 115; Pet. 34–35, 45; Ex. 1003 ¶¶ 98, 120. Like Figure 6, this discloses the components’ electrical relationships. Li’s disclosure of certain electrical relationships does not specify any particular spatial relationships of varistor R1 and capacitor C1 to an end wall. And neither Petitioner nor Dr. Ackley explains why a person of ordinary skill in art would have read the disclosed electrical relationships as teaching component locations to arrive at the particular spatial arrangement required by the claim.” slip op. at 22
§ 103 obviousnesscites PhillipsPatents in suitUS 10,560,989 - PTAB · Aug 16, 2023 · IPR2023-00272 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–6, 8–12, and 14–18 are obvious over the Jing and Huang based combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“[c]onsistent with Sotera Wireless, Inc., the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB. Guidance Memo 3. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020- 01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A). Petitioner has offered to submit a Sotera stipulation in the parallel proceeding. See Ex. 1009. In addition, on July 17, 2023 the parties filed a Joint Motion to Stay All Deadlines and Notice of Settlement in the Current Action. See Current Action, Paper 96. The district court granted the motion” slip op. at 4
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“XI. CONCLUSION For the reasons discussed above, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it will succeed on its challenges to claim the following challenges to patentability: Claims 1–3, 8, 9, 14, and 15 as obvious over Jing and Huang; Claim 4 as obvious over Jing, Hunag, and Foo Claims 10 and 16 as obvious over Jing, Huang, and Zhao Claims 5 and 6 as obvious over Jing, Huang, Foo, and Deng; and Claims 11, 12, 17, and 18 as obvious over Jing, Huang, Zhao and Deng. The factual findings and conclusions of law in this Decision are preliminary and based on the current record. They are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. Our final decision as to the patentability of challenged claims will be based on the full record developed during trial, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in such a response may be deemed waived. XII. ORDER In consideration of the foregoing, it is hereby: ORDERED that, pursuant to 35 U.S.C. § 314(a) an inter partes” slip op. at 35
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) at the time of the ’397 patent’s earliest claimed priority date as having “a Bachelor’s degree in electrical engineering, or an equivalent field, as well as at least 1-2 years of academic or industry experience in lighting design, including knowledge of light emitting diodes (LEDs) and related technology for driving LEDs.” Pet. 5 (citing Ex. 1004 ¶ 24). Petitioner also notes that “[a] person of ordinary skill in the art with a higher level of education may have fewer years of academic or industry 3 Chinese Patent No. CN203036295U to Jing (Certified Translation) (Ex. 1002). 4 US Patent No. 9,151,475 B2 (Ex. 1003). 5 US Patent No. 9,206,970 B2 (Ex. 1008). 6 PCT Publication No. WO2013/152485 A1 (Ex. 1005). 7 US Patent No. 9,970,640 B2 (Ex. 1007). 8 Chinese Patent No. CN203797412U to Deng (Certified Translation) Ex. 1006. experience, or vice versa.” Id. Patent Owner does not comment on the level of ordinary skill. See generally, Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). As Petitioner’s description of an ordinarily skilled artisan appears to be commensurate with the subject matter of the ’397 patent and the references, we apply it 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
“A. Disposed on Petitioner asserts that the term “disposed on” does not require explicit construction, but contends that the term “should be understood to include the possibility of an intervening structure, such as an adhesive.” Id. at 13. Petitioner notes that the Specification describes an embodiment in which the LED strip is described as disposed on an inner surface of the light tube and an embodiment in which a diffusion film is coated on an inner surface of the lamp tube, the LED light strip is disposed on an inner surface of the lamp tube, and a reflective film is described as disposed on an inner surface of the lamp tube. Id.; Ex. 1001, 4:30–31, 4:37–44, 12:21–25 (diffusion covering but not in contact with LED sources), Figs. 30–31. Petitioner’s unopposed construction is consistent with the use of the term “disposed on” in the Specification. For purposes of this Decision, we apply the construction proposed by Petitioner.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,830,397 - PTAB · Aug 16, 2023 · IPR2023-00271 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on challenged claims 1, 2, 6, 9–11, 13–15, 29–34, 36, and 39–41, finding a reasonable likelihood of success on the listed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › §315(b) time barNot time barredDecided for petitioner
“C. Analysis Determining whether a non-party is a “real party in interest” demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner. Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336, 1351 (Fed. Cir. 2018). Privity “is an equitable rule that takes into account the ‘practical situation,’ and should extend to parties to transactions and other activities relating to the property in question.” Id. at 1349 (emphasis Kyl)). Nevertheless, the mere existence of a relationship between Petitioner and Ruising is not sufficient—that relationship must be related to the lawsuit and be sufficiently close that it can be fairly said the petitioner had a full and fair opportunity to litigate the validity of the patent in that lawsuit. See WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1319 (Fed. Cir. 2018). On the record before us, the weight of the equities does not favor finding that the Petition is time-barred on the basis that Ruising is a privy, or real party in interest or because Petitioner is acting as a proxy for Ruising.” slip op. at 6
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“There is no evidence that Ruising is a real party in interest in this proceeding or that Petitioner pursued this proceeding as a proxy for Ruising. The outcome of the CH Lighting Action is independently on appeal to the Federal Circuit. Reply 2–3. The outcome of that appeal will affect Ruising directly. As Petitioner was not a party to the CH Litigation, Petitioner is not a party in the appeal. The Petition before us was filed only after Patent Owner sued Petitioner, and we determine that Petitioner is acting in its own defensive interest, not as a proxy for Ruising. Id. at 1. Petitioner also emphasizes that, notwithstanding any indemnity obligations, Petitioner prepared the Petition without any input or participation from Ruising and that Ruising has no control over this proceeding. Id. at 1, 5.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the Current Action. Prelim. Resp. 19–26. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We have authority under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,295,125 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00398 · APJ George R Hoskins · IPR · Institution
Instituted IPR of claims 1–22 on the sole § 103 ground, finding a reasonable likelihood of prevailing on at least claim 1 over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“3. Conclusion as to Claim 1 Based on the present record, we conclude Petitioner has provided sufficient argument and evidence in relation to the proposed obviousness of claim 1 over Dill, Vadhri, and Akashika, to demonstrate a reasonable likelihood that Petitioner would prevail with respect to this challenge at trial.” slip op. at 37
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner contends a person having ordinary skill in the art pertaining to the ’196 patent “would have had a working knowledge of mobile payment systems and techniques,” as well as “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4; Ex. 1003 ¶¶ 21–23. Further according to Petitioner: “Lack of work experience can be remedied by additional education, and vice versa.” Pet. 4; Ex. 1003 ¶ 22. The Preliminary Response does not dispute this aspect of the Petition. For purposes of this Decision, we determine a person of ordinary skill in the art “would have had a working knowledge of mobile payment systems and techniques” and “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting,” as Petitioner proposes. Pet. 4. We are satisfied that this definition generally comports with the level of skill necessary to understand and implement the teachings of the ’196 patent and the asserted prior art. See Ex. 1003 ¶ 22; Ex. 2001 ¶¶ 33–35 (agreeing with this articulation of the level of ordinary skill).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.” Prelim. Resp. 8; Ex. 2001 ¶¶ 39–41. Patent Owner cites passages of the ’196 patent specification to support this argument. See Prelim. Resp. 8 (citing Ex. 1001, 11:32–33, 12:27–36); Ex. 2001 ¶¶ 40–41. Patent Owner proffers this claim construction because, according to Patent Owner, “the Petition (through its mappings [of the ’196 patent to Dill]) has implicitly raised the possibility that a ‘mobile device’ need not be a physical device, and need not even be mobile.” Prelim. Resp. 9–10 (citing Pet. 22–23, 33; Ex. 1005, Fig. 9); Ex. 2001 ¶¶ 39–41. At this stage, we agree with Patent Owner’s understanding of the “mobile device” claim term. Patent Owner’s construction generally accords with the term’s plain and ordinary meaning and is supported by the ’196 patent specification. See, e.g., Ex. 1001, 11:32–35, 12:27–36 (identifying a phone and a tablet as “mobile device” examples). We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(a) below. In this Decision, for purposes of institution, we construe the term “mobile device” to mean a “physical device that is mobile, such as a phone or tablet.”” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed patent owner constructionDecided for patent owner
“Patent Owner argues we should construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.” Prelim. Resp. 10; Ex. 2001 ¶¶ 42–43. Patent Owner contends this corresponds to an express definition of the term in the ’196 patent specification. See Prelim. Resp. 10 (citing Ex. 1001, 7:14–16); Ex. 2001 ¶ 42. Patent Owner asserts its proffered construction also is consistent with the ’196 patent claims and specification, taken as a whole. See Prelim. Resp. 10–11 (citing Ex. 1001, Fig. 2, 11:32–40, 12:27–33). Patent Owner suggests that applying its proffered construction leads to a deficiency in the Petition’s contentions concerning Dill. See Prelim. Resp. 11, 18–19; Ex. 2001 ¶¶ 43, 51–52. At this stage, we agree with Patent Owner’s understanding of the “mobile wallet application” claim term. The ’196 patent specification states: “As used herein, a mobile wallet application is a mobile wallet application installed on a SIM card or elsewhere on a mobile device.” Ex. 1001, 7:14–16 (emphases added). For purposes of institution, we conclude this is an express definition of the claim term “mobile wallet application.” We therefore apply Patent Owner’s construction in this Decision. Nonetheless, we disagree with Patent Owner’s argument that this construction leads to a deficiency in the Petition’s contentions concerning Dill, for reasons provided in Section III.G.1(b) below. In this Decision, for purposes of institution, we construe the term “mobile wallet application” to mean a “wallet application installed on a SIM card or elsewhere on a mobile device.”” slip op. at 12
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,438,196 - Apple Inc. v. Fintiv, Inc.InstitutedPTAB · Jul 10, 2023 · IPR2023-00399 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–22 on the ground that they would have been obvious over Dill, Vadhri, and Akashika.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
- Skill levelSkill level petitioner adoptedDecided for petitioner
“to “a bachelor’s degree in electrical engineering, computer science, or equivalent training, and approximately two years of work experience in software development with a basic knowledge of accounting.” Pet. 4. Petitioner also asserts that an ordinary artisan “would have had a working knowledge of mobile payment systems and techniques pertinent to the ’488 patent,” and that a “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. at 3–4 (citing Ex. 1003 ¶¶ 21–23).” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“On this record, we preliminarily determine that the term “mobile wallet” is a stored value account or prepaid access account that allows its owner to pay for goods and services. This construction is based on the Specification’s express definition of this term: The term “mobile wallet” or “mobile wallet account” refers to a stored value account or prepaid access account (PPA) that allows the owner (or “subscriber”) to pay for goods and services on the mFS platform from his or her mobile wallet account. Ex. 1001, 9:9–13; see id. at 6:30–35 (“mFS” refers to “mobile financial services”). Our construction is also consistent with the construction recently adopted by a district court. See Fintiv, Inc. v. PayPal Holdings, Inc., 6:22- cv-00288, Dkt #60 (W.D. Tex.) (claim construction order; included in the record as Exhibit 3002). At this stage, we discern no need to construe the larger phrase identified by Petitioner.” slip op. at 13
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“purposes of institution) that Dill, Vadhri, and Akashika, in combination, teach or suggest each limitation of independent claim 1, and that an ordinary artisan would have been motivated to combine these references in the manner proposed by Petitioner. We have considered Patent Owner’s arguments, but those arguments are unavailing at this stage for the reasons explained above. Accordingly, we are persuaded that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Dill, Vadhri, and Akashika. As a result, we institute an inter partes review.” slip op. at 39
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,208,488 - Infineon Technologies AG v. Feinics Amatech TeorantaAll claims unpatentablePTAB · Jul 6, 2023 · IPR2022-00417 · APJ Brian D Range · IPR · Final written decision
Claims 1, 2, 4–8, 10–12, and 18 are unpatentable as obvious over Takeda-322.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“The parties are in general agreement as to the level of education (undergraduate degree in electrical engineering or equivalent) and the number of years of experience working with RFID devices (1–2 years), but differ as to the exact nature of that experience (developing antennae used in RFID devices versus developing antennae used in RFID devices for inductive coupling). The Specification of the ’250 patent describes its technical field as relating to a smart card that may comprise an RFID (radio frequency identification) chip with antenna components for operating in contactless modes. Ex. 1001, 1:37–54. The Specification discusses both inductive and capacitive coupling. See, e.g., id. at 3:14–39. Patent Owner submitted into the record a text titled RFID Handbook, which details different frequencies and types of coupling that may be at use by various RFID systems. See Ex. 2005, 22–23. Although this text differentiates between “inductively or capacitively coupled system[s] and microwave system[s] or backscatter system[s]” (id. at 23 (emphasis omitted)), its description of each of these types of RFID devices indicates that an ordinary artisan would have had experience with RFID devices generally. Thus, we are not persuaded that the level of ordinary skill should be narrowly confined to developing antenna for RFID devices that are used for inductive coupling. For the purposes of this Decision, we adopt Petitioner’s definition of the level of ordinary skill in the art as “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Pet. 7.5” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“testimony of Petitioner’s declarant, Dr. van der Weide, for several reasons. Patent Owner first argues that Dr. van der Weide lacks relevant experience to provide opinions through the lens of a person having ordinary skill in the art. PO Resp. 27–38 (citing Ex. 2003 ¶ 71). According to Patent Owner, Dr. van der Weide “has experience with RFID that operates at microwave frequencies,” but “identifies no experience with relevant inductive RFID systems at lower frequencies (e.g., frequencies such as 13.56MHz and 8.2MHz).” Id. This argument is based on Patent Owner’s articulation of the level of ordinary skill in the art, which we have not adopted. Moreover, Petitioner presents evidence that Dr. Van der Weide’s experience exceeds even Patent Owner’s articulation of the level of ordinary skill in the art. Pet. Reply 22–23 (citations omitted). Dr. van der Weide’s education and experience are sufficient to allow us to grant his testimony our full consideration. See Ex. 1003 ¶¶ 2–7; Ex. 1004 (van der Weide curriculum vitae).” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededTerm construed board ownMixed
“appears in independent claims 1 and 18) should be construed as “a component in a booster antenna for coupling with a module antenna connected to an integrated circuit.” PO Resp. 15–16. We determine that it is unnecessary to construe this claim term for purposes of this Decision. See, e.g., Nidec Motor Corp., 868 F.3d at 1017 (“[W]e 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))). As we explain herein, the preponderance of the evidence supports that Takeda-322 renders the recited “coupler coil” obvious even under Patent Owner’s proposed construction. See Section III(G)(2)(b), infra.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“to the extent Takeda-322 does not expressly teach a single wire implementation, such an implementation would have been obvious because it was a known, conventional, technique and because it would lead to obvious and predictable results while avoiding drawbacks of multiple wires. Id. at 11–12 (citing Ex. 1003 ¶¶ 59–63; Ex. 1012, 3:54–60, 4:26–36, 5:35– 60 (Ayala suggesting use of single wire)). Petitioner further argues, with supporting evidence, that a person of ordinary skill in the art would have had a reasonable expectation of success in achieving this implementation. Id. The preponderance of the evidence supports Petitioner’s argument that a person of ordinary skill in the art would have had both reason and a reasonable expectation of success in achieving this implementation, and Patent Owner does not dispute the argument. We, thus, determine that a single-wire embodiment of Takeda-322 would have been obvious.” slip op. at 26
Patent outcomesUS 9,033,250 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,033,250
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.