• Bj’S Wholesale Club Holdings, Inc. v. Walmart Apollo, LLCInstituted
  PTAB · Apr 11, 2023 · IPR2022-01564 · APJ Patrick R Scanlon · IPR · Institution

  The Board instituted IPR on claims 1–14 and all asserted grounds, finding a reasonable likelihood that Keith anticipates at least claims 1 and 10.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2021). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. We institute an inter partes review of claims 1‒14 based on the grounds set forth in the Petition.” slip op. at 2

  • Parallel petitionsDecided for petitioner

    “Under the circumstances presented, where the priority date of the challenged claims is disputed, we conclude it is not unreasonable for Petitioner to present separate challenges, one of which relies on references that are prior art only if the challenged claims are not entitled to Patent Owner’s claimed priority date, which has yet to be finally determined. See TPG 59 (stating that “a dispute about priority date requiring arguments under multiple prior art references” can be a potential reason for the Board to institute trial on multiple petitions challenging the same patent). Thus, on the present record, we decline to exercise our discretion to deny institution of this Petition on the basis of Petitioner filing multiple petitions.” slip op. at 46

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “have had a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a related field or equivalent coursework or experience, and one to two years of experience with mobile device applications and retail POS systems,” also noting that “[m]ore education can supplement practical experience and vice versa.” Pet. 20–21 (citing Ex. 1002 ¶ 34). Patent Owner, at this stage of the proceeding, does not dispute Petitioner’s definition of the person of ordinary skill in the art. Prelim. Resp. 18. For the purposes of this Decision, we apply Petitioner’s proffered level of skill in the art because it appears consistent with the problems addressed in the ’435 patent and the prior art.” slip op. at 11

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached

    “We determine that an express construction of this or any other claim term is not necessary for purposes of this Decision. 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§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denial
  Patents in suitUS 10,803,435
• Apple Inc. v. Rfcyber Corp.Instituted
  PTAB · Jan 23, 2023 · IPR2022-01239 · APJ Patrick R Scanlon · IPR · Institution

  The Board instituted IPR on claims 1–5, 12–14, 17, and 18 on all asserted grounds after finding a reasonable likelihood of prevailing on at least one challenged claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1‒5, 12– 14, 17, and 18 based on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, computer engineering, or equivalent with at least one year of experience in the field of mobile payments,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 6–7 (citing Ex. 1003 ¶¶ 34–35).” slip op. at 9

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “agreed to construe the claim term “payment gateway” as a “server or collection of servers for settling a payment.” Pet. 9 (citing Ex. 1016, 2). Petitioner further contends that the parties are disputing the constructions of the claim terms “e-purse,” e-purse applet,” and “application” in the District Court Case, but the differences between the proposed construction need not be resolved for this proceeding because its asserted grounds of unpatentability satisfy both Patent Owner’s and Petitioner’s proposed constructions. Id. at 9–10. Patent Owner argues that, for the purposes of its Preliminary Response only, claim construction is not required to resolve any issues. Prelim, Resp. 4. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 10

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “In view of these teachings, Petitioner argues that one of ordinary skill in the art would have been motivated to implement Jogu’s balance check in Laracey’s mobile device because this modification would have achieved the same benefits in Laracey that the balance check provides in Jogu. Id. at 40– 41 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)). Petitioner also argues that one of ordinary skill in the art would have understood that Jogu’s balance check ensures that a user is informed of insufficient funds before proceeding with a transaction that will ultimately fail, which provides the benefit producing successful transactions and avoids the need to resolve an insufficient funds issue. Id. at 41 (citing Ex. 1003 ¶¶ 119–121). In addition, Petitioner argues that a skilled artisan “would have recognized that Jogu’s balance check process is particularly well-suited to Laracey’s system because Laracey expressly provides alternative account options for the user to select in the event an e-purse has insufficient funds.” Id. (citing Ex. 1003 ¶¶ 119–121). Petitioner asserts that there would have been a reasonable expectation of success for the proposed combination because it would have required only minor programming that was well within the ordinary skill in the art. Id. at 42 (citing Ex. 1003 ¶ 122).” slip op. at 16

  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 10,600,046
• Apple Inc. v. Rfcyber Corp.Instituted
  PTAB · Jan 23, 2023 · IPR2022-01256 · APJ Kevin W Cherry · IPR · Institution

  The Board instituted IPR of claims 1–11 based on the § 103 ground over Buhot, GPC, and Zhu, 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

    “institute an inter partes review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” The Supreme Court has held that the Board, in a decision to institute under 35 U.S.C. § 314(b), may not institute review on less than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355–56 (2018). Moreover, in accordance with our rules, “[w]hen instituting inter partes review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” 37 C.F.R. § 42.108(a) (2020); see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”). Applying those standards, and upon considering the Petition, the Preliminary Response, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’724 patent. Accordingly, we institute an inter partes review of all challenged claims (i.e., claims 1–11) of the ’724 patent, based on the ground asserted in the Petition.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Having considered the record, we determine that no express claim construction is necessary for any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (holding that only claim terms in controversy need to be construed, and only to the extent necessary to resolve the controversy (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “contends that an ordinarily skilled artisan for the ’724 patent “would have had at least a bachelor’s degree in computer engineering, computer science, electrical engineering, or a related field, with at least one year of experience in the field of mobile payment technology. Additional pertinent education might substitute for the requisite experience and vice versa.” Pet. 6–7 (citing Ex. 1007 (Smith Decl.) ¶¶ 34–35). Patent Owner states that it “utilizes Petitioner’s proposed level of skill in the art,” but only for its Preliminary Response. Prelim. Resp. 9. Based on this record, we adopt Petitioner’s articulation of the level of ordinary skill in the art, which is consistent with the ’724 patent and the asserted prior art, and we apply it in our obviousness evaluations below. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art, itself, can reflect appropriate level of ordinary skill in art).” slip op. at 9

  • Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateDecided for petitioner

    “earlier applications, in particular Application No. 11/534,653 (“the ’653 application”), which issued as U.S. Patent No. 8,118,218 B2 (“the ’218 patent”). “It is elementary patent law that a patent application is entitled to the benefit of the filing date of an earlier filed application only if the disclosure of the earlier application provides support for the claims of the later application, as required by 35 U.S.C. § 112.” PowerOasis, 522 F.3d at 1306; New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002); Lucent Techs., Inc. v. Gateway, Inc., 543 F.3d 710, 718 (Fed. Cir. 2008) (“Patent claims are awarded priority on a claim-by-claim basis based on the disclosure in the priority applications.”). The test for determining compliance with the written description requirement under § 112(a) is whether the original disclosure of the earlier-filed application reasonably would have conveyed to one with ordinary skill in the art that the inventor had possession the claimed subject matter at the time of the earlierfiled application. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). It is well settled that “[e]ntitlement to a filing date does not extend to subject matter which is not disclosed but would be obvious over what is expressly disclosed.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1571−72 (Fed. Cir. 1997). “It is not sufficient for purposes of the written description requirement of § 112 that the disclosure, when combined with the knowledge in the art, would lead one to speculate as to modifications that the inventor might have envisioned, but failed to disclose.” Id. Nor could the claimed subject matter have been “envisioned” from the earlier disclosure to establish written description support. Goeddel v. Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010). We agree with Petitioner that, on this record, there does not appear to be support for limitation [1(j)] in the ’653 application. Patent Owner identifies the following disclosure from the ’218 patent (the patent that issued from the ’653 application) as supporting limitation [1(j)]: According to one embodiment, a smart card has a preloaded smart card operation system that provides security framework to control the access to the Smart card (e.g., an installation of external applications into the smart card). In order to manage the life cycle of an external application, a card manager module is configured by using the smart card security framework. For instance, a Java based smart card, SmartMX, is preloaded with an operating system JCOP 4.1. The Global Platform 2.1 installed on the SmartMX performs the card manager functionality. Ex. 2001 (’218 patent), 4:47–56. Patent Owner argues that “this description is substantively identical to that on which Apple relies for disclosure of the “emulator device” and “replace out of the emulator device . . . replacing out of the emulator device . . .” limitations. Prelim. Resp. 26. Patent Owner contends that “Apple relies on Buhot’s discussion of an ‘operating system 314 (running on processor 400) for the ‘emulator device’ limitation (Pet. at 31), and relies on Zhu’s alleged teachings regarding a ‘smart card manager . . . which governs the process of loading and unloading applications out of an emulator’ for the ‘replace out of the emulator device . . . replacing out of the emulator device’ limitations.” Id. (citing Pet. 43). Patent Owner asserts that Petitioner “cannot argue with a straight face that its proposed combination discloses” slip op. at 21

  Claim construction§ 103 obviousness§ 112 disclosurecites Phillips · KSR · Graham
  Patents in suitUS 11,018,724
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2022-00362 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable because the evidence did not establish the sensors were fixed relative to each other.

  RulingsFinal written decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “C. Claim Construction In inter partes reviews, the Board interprets claim language using the district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19. capture command causes the digital camera to store an image to memory” in claim 1, “capturing an image to the digital camera in response to . . . the image capture command” in claim 8, and “correlate the gesture detected . . . with an image capture function and subsequently capture an image using the digital camera” in claim 13. Pet. 8. Specifically, Petitioner asserts that these phrases “should be construed broadly enough to encompass capturing/storing video or still images,” and provides reasons supporting its assertion. Id. at 8–10. Patent Owner does not contest Petitioner’s proposed claim constructions. PO Resp. 5. We agree with Petitioner’s supporting reasoning and accordingly adopt Petitioner’s proposed claim constructions.” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. / LG Electronics, Inc. et al. v. Gesture Technology Partners, LLCSome claims unpatentable
  PTAB · Dec 5, 2022 · IPR2021-00921 · APJ Patrick R Scanlon · IPR · Final written decision

  Claims 1–3, 5–10, and 12–17 are unpatentable as obvious over Numazaki and Nonaka; claims 4, 11, and 18 were not shown unpatentable.

  RulingsFinal written decision

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We find that Petitioner’s Reply argument is not beyond the proper scope of a reply because it directly responds to Patent Owner’s argument that Petitioner does not explain how elements from both the third and fifth embodiments would accessed by the reflected light extraction unit and whether these elements would operate simultaneously or at different times. Moreover, Petitioner’s Reply argument elaborates on the contentions in the Petition that the gesture recognition would be implemented as a means of allowing the user to initiate the fifth videoconferencing functionality. Pet. 31; see Chamberlain Grp., Inc. v. One World Techs., Inc., 944 F. 3d, 919, 925 (Fed. Cir. 2019) (“Parties are not barred from elaborating on their arguments on issues previously raised.”). Accordingly, we find that the Petition adequately explains how the reflected light extraction unit would be accessed by both the third embodiment’s shape interpretation unit 333 and the fifth embodiment’s extraction unit 353. We particularly credit Dr. Bederson’s uncontroverted testimony that “it would be well within the capabilities of a [person having ordinary skill in the art] to utilize the same output by two separate processing blocks to implement the proposed combination,” and one of ordinary skill in the art “would understand there are no technical barriers to arranging multiple distinct processing units that separately process the same output of a single unit.” See Ex. 1018 ¶ 9.” slip op. at 24

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableNot shown unpatentableMixed

    “We agree with Patent Owner that the Petition does not establish sufficiently that Numazaki’s unit 102 and camera 351 are fixed relative to one another. Without more, the mere fact that unit 102 and camera 351 are arranged in parallel and have overlapping fields of view does not establish that the structures are fixed. At the oral hearing, counsel for Petitioner indicated that Petitioner’s position was not an inherency argument but relied on Dr. Bederson’s analysis and interpretation of Numazaki’s fifth embodiment. Tr. 17:7–15. The Petition, however, does not reference any such analysis in connection with the subject matter of claims 4, 11, and 18. 27–28 of the Petition, which pertain to limitation 1[(a)]) discuss the overlapping fields of view but not assert that overlapping fields of view require the structures to be fixed with respect to one another. For the foregoing reasons, we determine that Petitioner has not shown by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 4, 11, or 18. 6. Dependent Claims 2, 3, 5–7, 9, 10, 12, and 14–17 Petitioner provides reasonable and detailed explanations, supported by the testimony of Dr. Bederson, indicating where in the references the limitations of claims 2, 3, 5–7, 9, 10, 12, and 14–17 are disclosed. Pet. 33– 43, 44, 47, 49. Further, Patent Owner offers no arguments particularly directed to these dependent claims. PO Resp. 22, 25, 28. We have considered the evidence and arguments of record and determine that Petitioner has demonstrated by a preponderance of the evidence that the combination of Numazaki and Nonaka renders obvious claims 2, 3, 5–7, 9, 10, 12, and 14–17 for the reasons discussed in the Petition and as supported by the testimony of Dr. Bederson.” slip op. at 34

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted

    “After institution, LG Electronics, Inc. and LG Electronics U.S.A., Inc. filed a petition and a motion for joinder to this proceeding. IPR2022-00092, Papers 1, 3. We granted the motion for joinder, and IPR2022-00092 was joined with this proceeding and dismissed. Paper 12, 11–12. In addition, Google LLC filed a petition and a motion for joinder to this proceeding. IPR2022-00362, Papers 2, 3. We granted the additional motion for joinder, and IPR2022-00362 was joined with this proceeding and dismissed. Paper 16, 5–6. Consequently, Apple Inc., LG Electronics, Inc., LG Electronics U.S.A., Inc., and Google LLC are joined in this proceeding.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “would have had at least a bachelor’s degree in electrical engineering or equivalent with at least one year of experience in the field of human computer interaction,” and “[a]dditional education or experience might substitute for the above requirements.” Pet. 5–6 (citing Ex. 1003 ¶¶ 29–31). Patent Owner does not dispute Petitioner’s definition for the purposes of its Response. PO Resp. 5. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it is consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition. slip op. at 8

  Patent outcomesUS 8,878,949 mixed
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,878,949
• Apple Inc. v. Logantree, LPInstituted
  PTAB · Sep 1, 2022 · IPR2022-00040 · APJ Patrick R Scanlon · IPR · Institution

  The Board instituted IPR on claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 on all asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 based on the grounds set forth in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes a claim construction for the term “movement sensor.” Pet. 5–6. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “skill in the art to modify the device of the Allum-Raymond combination “to include Conlan’s buttons to enable the device to gather data (e.g., subject’s balance or movement) as it relates to a particular event specified by the user input buttons.” Id. at 21–22 (citing Ex. 1003 ¶ 79). Petitioner also articulates reasons, supported with the testimony of Dr. Kenny, to combine the relied-upon aspects of the references with a foreseeable chance of success. Id. at 22–24 (citing Ex. 1008, 7:8–10, 16:17–19; Ex. 1010, 1:65–2:2, 4:5–57, 5:64–6:67, 9:1–15, 10:6–65, 11:58–62, Fig. 2; Ex. 1003 ¶¶ 79–84). At this stage of the proceeding, we are persuaded that Petitioner’s rationale and evidence are sufficient to show that a person of ordinary skill in the art would have combined Conlan with Allum and Raymond in the manner proposed. Furthermore, we are persuaded on this record that Petitioner has made an adequate showing that the combination of Allum, Raymond, and Conlan discloses the claimed user input.” slip op. at 18

  Claim construction§ 103 obviousness
  Patents in suitUS 6,059,576
• Apple Inc. v. Logantree, LPInstituted
  PTAB · Sep 1, 2022 · IPR2022-00037 · APJ Patrick R Scanlon · IPR · Institution

  The Board instituted inter partes review of claims 1–5, 8–11, 20, 25, 30–32, 36, 39–42, 45–51, 61–65, 144, and 147 on all asserted grounds.

  RulingsInstitution decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Petitioner proposes a claim construction for the term “movement sensor.” Pet. 17–18. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. 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 9

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted

    “Regarding this combination, Petitioner argues that it would have been obvious to one of ordinary skill in the art “to implement Ono’s device, as suggested by Hutchings, with accelerometers to measure accelerations in three dimensions, rotational sensors to provide the angle of rotation along each axis of the translational coordinate.” Id. at 24 (citing Ex. 1102, 4:21–32, 4:55–65, 5:3–16, 8:44–9:17, 9:48–12:37, Figs. 6–7; Ex. 1100 ¶¶ 62–65). Petitioner also articulates reasons, supported with the testimony of Dr. Kenny, to combine the relied-upon aspects of the references with a reasonable expectation of success. Id. at 25–26 (citing Ex. 1102, 2:15–31, 2:45–61, 1:60–64, 3:32–44, 4:7–26, 9:48–10:18, 10:43–51, Figs. 7–9; Ex. 1101, 13:40–42, 18:28–19:6; Ex. 1100 ¶¶ 63–64). At this stage of the proceeding, we are persuaded that Petitioner’s rationale and evidence are sufficient to show that a person of ordinary skill in the art would have combined Ono and Hutchings in the manner proposed. Furthermore, we are persuaded on this record that Petitioner has made an adequate showing that the combination of Ono and Hutchings discloses the claimed movement sensor. In particular, Hutchings discloses unit 48 having three accelerometers that measure accelerations in three dimensions and unit 50 having three rotational sensors that measure the angle of rotation along the three coordinate axes. Ex. 1102, 8:49–59, Fig. 6. We are persuaded at this stage of the proceeding that this arrangement would have been capable of measuring data associated with unrestrained movement in any direction.” slip op. at 15

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “m) Conclusion For the above reasons, we determine, based on the current record, that the Petition shows a reasonable likelihood that Petitioner would prevail in demonstrating that claim 1 is unpatentable over Ono and Hutchings.” slip op. at 22

  Claim construction§ 103 obviousness
  Patents in suitUS 6,059,576
• Rideco Inc. v. Via Transportation, Inc.Instituted
  PTAB · Sep 1, 2022 · IPR2022-00740 · APJ Michael L Woods · IPR · Institution

  The Board instituted IPR on claims 1–13, 15, and 17–20, finding a reasonable likelihood that at least one challenged claim is unpatentable on the asserted grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “discretionary denial. Fintiv, Paper 11 at 5–16. The Director of the USPTO issued, on June 21, 2022, an Interim Procedure regarding the application of Fintiv factors for purposes of determining whether to exercise discretion to deny a petition. Interim Procedure for Discretionary Denials in AIA Post- Grant Proceeding with Parallel District Court Litigation, available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Interim Procedure”). The Interim Procedure states: “[T]he PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.” Interim Procedure at 3. Petitioner stipulates that “if the Board institutes the Petition on the same grounds presented, then it will not seek resolution in the district court of any ground of invalidity raised in the Petition or that could have been raised in the Petition.” Pet. 68; see also Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A) (“Sotera”).” slip op. at 8

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “In evaluating arguments under § 325(d), we use a two-part framework, (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) (addressing in a two part framework the factors presented in Becton, Dickinson & Co. v. B. Braun Melsungen AG, Case IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to § III(C)(5), first paragraph)).” slip op. at 10

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims of the ’411 patent. Accordingly, we institute an inter partes review of claims 1–13, 15, and 17– 20 of the ’411 patent on the grounds asserted in the Petition.” slip op. at 2

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention (“POSITA” or “PHOSITA”) “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 4–5 (citing Ex. 1003 ¶ 37). “For the purpose of [the] Preliminary Response only, Patent Owner does not dispute Petitioner’s definition.” Prelim. Resp. 12. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’411 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 12

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 10,197,411
• Evolution Well Services, LLC v. BJ Energy Solutions, LLCInstituted
  PTAB · Aug 24, 2022 · IPR2022-00399 · APJ Sean P O’Hanlon · IPR · Institution

  The Board instituted IPR on claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 on all proposed grounds, finding a reasonable likelihood of prevailing on at least one claim.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied

    “[W]here the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation at 4–5.3 “Compelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Id. at 4. On the current record, we agree with Petitioner that “the merits of the Petition are ‘compelling.’” Prelim. Reply 1. For the reasons explained below, we determine that the merits of Petitioner’s challenges to be compelling, and, therefore, we decline to exercise discretion under § 314(a) to deny institution. Additionally, even if we were to consider the Fintiv factors in detail, we would not exercise discretion to deny institution. As noted above, the district court litigation between the parties was recently transferred to the U.S. District Court for the Southern District of Texas. See Ex. 1205. That Court has scheduled an initial pretrial conference for September 22, 2022, during which the Court will set a schedule for initial preparation and enter a scheduling order for the proceeding. See Ex. 1204, 1–2. Thus, any argument that we should deny institution based on the timing of the district court litigation would be speculative at best. slip op. at 8

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “III. CONCLUSION For the foregoing reasons, we determine that the information presented establishes a reasonable likelihood that Petitioner would prevail in showing that at least one of the challenged claims of the ’049 patent is unpatentable. At this preliminary stage, we have not made a final determination with respect to the patentability of the challenged claims or any underlying factual and legal issues. See TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016) (noting that “there is a significant difference between a petitioner’s burden to establish a ‘reasonable likelihood of success’ at institution, and actually proving invalidity by a preponderance of the evidence at trial”). Accordingly, inter partes review is instituted as to all challenged claims and all proposed grounds of unpatentability. See SAS, 138 S. Ct. at 1359–60; see also PGS Geophysical AS v. Iancu, 891 F.3d 1354, 1360 (Fed. Cir. 2018) (interpreting the statute to require “a simple yes-or-no institution choice respecting a petition, embracing all challenges included in the petition”); CTPG 64 (“The Board will not institute on fewer than all claims or all challenges in a petition.”). IV. ORDER Accordingly, it is: ORDERED that pursuant to 35 U.S.C. § 314(a), an inter partes review of claims 1–3, 6–8, 10, 12, 13, 15, and 18–20 of the ’049 patent is instituted with respect to all grounds set forth in the Petition; and” slip op. at 49

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’” Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (alteration in original) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Neither party proffers a definition for any claim term. Pet. 2; Prelim. Resp. 2. For purposes of this Decision, and based on the record before us, we determine that no construction of any term is necessary. We note that this determination does not preclude the parties from arguing their proposed constructions of the claims during trial. Indeed, the parties are hereby given notice that claim construction, in general, is an issue to be addressed at trial. A final determination as to claim construction will be made at the close of the proceeding, after any hearing, based on all the evidence of record. The parties are expected to assert all of their claim construction arguments and evidence in the Petition, Patent Owner’s Response, Petitioner’s Reply, or otherwise during trial, as permitted by our rules. slip op. at 11

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “The level of ordinary skill in the art is “a prism or lens” through which we view the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). The person of ordinary skill in the art is a hypothetical person presumed to have known the relevant art at the time of the invention. In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). In determining the level of ordinary skill in the art, we may consider certain factors, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” Id. (internal quotation marks and citation omitted). Petitioner contends that a person having ordinary skill in the art at the time of the invention (“POSITA”) would have a “range of qualifications” including “a bachelor’s degree in mechanical or chemical engineering and five years of work experience in the field of mechanical systems, motors, pumps, and/or oil field services.” Pet. 7 (citing Ex. 1003 ¶¶ 22–23). Patent Owner does not contest Petitioner’s proposed definition or offer a definition of its own. Prelim. Resp. 2. Based on the arguments presented and the cited references, we find Petitioner’s definition of the level of ordinary skill reasonable and for purposes of this Decision, adopt it as our own.” slip op. at 10

  Claim construction§ 103 obviousnessDiscretionary denialcites KSR · Graham
  Patents in suitUS 9,395,049
• Rideco Inc. v. Via Transportation, Inc.Instituted
  PTAB · Jun 28, 2022 · IPR2022-00286 · APJ Richard H Marschall · IPR · Institution

  Instituted IPR of claims 1–20 on all asserted grounds; the Board found a reasonable likelihood of prevailing on obviousness over Lambert, Poykko, and McCall.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner

    “When a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition, it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB. See Sotera, Paper 12 at 18–19. With such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in the parallel district court litigation. For these reasons, the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 7. The Interim Procedure “applies to all proceedings pending before the Office,” and therefore governs our treatment of Petitioner’s Sotera 6 Petitioner’s stipulation refers to “any ground of invalidity raised in the Petition or that could have been raised in the Petition” while the stipulation in Sotera refers to “any ground raised or that could have been reasonably raised in an IPR,” but we view the language as similar enough to fall within the scope of Sotera’s analysis. Reply 4; Sotera, Paper 12 at 18–19. Petitioner arguably stipulates to a broader prohibition than the petitioner in Sotera because Petitioner’s stipulation may encompass grounds that it could not have reasonably raised in the Petition. 7 Available at: https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf stipulation here. Id. at 9. Petitioner’s stipulation tracks the language of the Sotera stipulation that the Interim Procedure addresses and we “will not discretionarily deny institution” when Petitioner submits such a stipulation.8 Id. at 7. Because our analysis of Petitioner’s stipulation alone requires us to not exercise our discretion to deny institution under § 314(a), we need not address the parties’ remaining arguments as to application of the Fintiv factors to the facts in this case.” slip op. at 8

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “of the invention “would have been a person having (i) a Bachelor’s degree in computer science, computer engineering, electrical engineering, or a similar technical field[;] (ii) a working knowledge of computer programming and navigation systems; and (iii) two to four years of experience with location-based systems, user interfaces and databases.” Pet. 5–6 (citing Ex. 1003 ¶ 37). Patent Owner “does not dispute Petitioner’s definition.” Prelim. Resp. 23. For purposes of this Decision, we adopt Petitioner’s assessment of the level of ordinary skill in the art as it is consistent with the ’824 patent and the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 9

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner

    “Under these circumstances, where the parties now agree that the ordinary meaning should apply to the claim limitations in question and the district court adopted the same approach, we see no reason to depart from applying the ordinary meaning to those same claim limitations in this proceeding. We therefore apply the plain and ordinary meaning to “virtual bus stops” and “real-time.” In addition, we decline Patent Owner’s request that we deny institution based on alleged inconsistencies between Petitioner’s “ordinary meaning” interpretation urged here versus Petitioner’s rejected proposed constructions in the district court litigation as a sufficient basis to deny institution. As to the construction of dependent claim 8, we need not reach Petitioner’s arguments to determine whether to institute inter partes review. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (stating that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 11

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted

    “Petitioner also establishes sufficiently, based on the current record, that it would have been obvious to combine Lambert’s system with Poykko’s teaching to store a database of potential pickup and dropoff locations in memory, with those “virtual bus stops” accessed by Lambert’s server. See Pet. 25–26; Ex. 1005 ¶ 48. As Petitioner puts it, “it would have been obvious to a PHOSITA to similarly configure Lambert’s server to access memory including a database of stopping points associated with the rideshare system’s coverage area when dynamically selecting pickup and dropoff locations.” Id. at 26; Ex. 1003 ¶ 168. Petitioner’s assertions are adequately supported, at this stage of the proceeding, by Poykko and declarant testimony. See id. at 25–28 (citing Ex. 1003 ¶¶ 167–172). Similarly, Petitioner’s assertion that the combination of Lambert, Poykko, and McCall discloses the remaining limitations of claim 1 finds adequate support in the current record. See id. at 28–44.” slip op. at 21

  Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · Graham
  Patents in suitUS 9,816,824

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.