- PTAB · Mar 12, 2024 · IPR2023-01337 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–22 because Petitioner showed a reasonable likelihood of prevailing on obviousness over Rao, Oestvall, and Montemurro for at least claim 1.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When 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) (2022). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Accordingly, Oestvall is not the same or substantially the same as the art considered by the Office during the prosecution of the ’578 patent. As can be seen in the analysis of Petitioner’s ground below, Oestvall is significant to Petitioner’s challenge. Because the Office did not previously consider all three of the prior art references relied on in the Petition, and 8 US 2006/0291419 A1, published Dec. 28, 2006 (Ex. 2005). previously considered, we determine the Office did not previously consider the same or substantially the same prior art as is relied on here. Therefore, part one of the Advanced Bionics framework is not met. 3. Conclusion Based on our consideration of Becton Dickinson factors (a), (b), and (d), we find that the same or substantially the same art or arguments were not previously presented to the Office. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We therefore decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 14
- Skill levelSkill level board ownOther
“Dr. McDaniel argues that a person of ordinary skill in the art “would have had (1) at least a bachelor’s degree in computer science, electrical engineering, or a related field, and (2) three to five years of experience with networking, power consumption of networked computing devices, and/or wireless digital communications systems,” and that “[a]dditional graduate education could substitute for professional experience, and vice versa.” Ex. 1003 ¶ 18. level of skill in the art proposed by Dr. McDaniel. Prelim. Resp. 6. For purposes of this Decision, we adopt Dr. McDaniel’s formulation of a person of ordinary skill in the art, which is consistent with the ’578 patent and the prior art.5” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“c) Undisputed Limitations Petitioner argues that Rao, Oestvall, and Montemurro (or a combination thereof) teach the remaining undisputed limitations of claim 110 and that a person having ordinary skill in the art would have combined the features of the prior art references. Pet. 12–16, 19–29. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the McDaniel Declaration, which are not addressed by Patent Owner at this stage (see Prelim. Resp.), we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Rao, Oestvall, and Montemurro teaches limitations 1pre, 1a, 9 This is not to say that, based on the current record, we find it illogical. Instead, the point is to emphasize that even if we do find it illogical on a complete record, the prior art is still relevant for all that it teaches. 10 The undisputed limitations are limitation 1pre, 1a, 1b, and 1c. Because Petitioner has sufficiently shown that the prior art teaches the preamble, we need not determine at this time whether the preamble is limiting. See Nidec, 868 F.3d at 1017. combined the teachings of the references in the manner set forth in the Petition. d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Rao, Oestvall, and Montemurro.” slip op. at 32
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,521,578 - PTAB · Mar 12, 2024 · IPR2023-01250 · APJ Scott B Howard · IPR · Institution
The Board instituted IPR on claims 1–20 on all asserted grounds, finding a reasonable likelihood that claim 1 would be unpatentable as obvious over Rao and Cole.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When 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) (2022). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“The record here falls squarely in the first category. Although the Examiner signed an Information Disclosure Statement citing Rao-2 and Cole-2, the Examiner did not rely on those references to reject any of the claims of the ’433 patent. See Ex. 1002 (excerpts of the prosecution history of the ’433 patent). In fact, during prosecution of the ’433 patent the Examiner never rejected the pending claims based on a prior art rejection. See Ex. 1002. Instead, the only rejection was for obviousness-type double patenting. Ex. 1002 at 227–250 (Office Action dated August 20, 2015). As discussed below in the analysis of the prior art, Petitioner has sufficiently shown a reasonable likelihood that claim 1 of the ’443 patent is obvious in light of Rao and Cole. See Section II.E.3.(a). By doing so, Petitioner demonstrates that the Office overlooked that claim 1 is obvious over the combination of Rao-2 and Cole-2 and, in doing so, erred in a manner material to the patentability of the challenged claims. See Tokyo Ohka Kogyo Co. v. Fujifilm Elec. Materials U.S.A., Inc., PGR2022-00010, Paper 9 at 8–9 (PTAB June 6, 2022); Samsung Elecs. Co. v. Evolved Wireless LLC., IPR2021-00943, Paper 9, 11 (PTAB Dec. 1, 2021).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“c) Undisputed Limitations Petitioner argues that Rao or Cole (or a combination of the references) teach the remaining undisputed limitations of claim 119 and that a person having ordinary skill in the art would have combined the features of the prior art references. Pet. 14–28. After reviewing Petitioner’s arguments and information regarding the limitations identified above, including the McDaniel Declaration, which are not addressed by Patent Owner at this stage (see Prelim. Resp.), we are persuaded that Petitioner sufficiently demonstrates, for purposes of this Decision, that the combination of Rao and Cole teaches limitations 1.1–1.5 and that a person having ordinary skill in the art would have combined the teachings of the references in the manner set forth in the Petition. d) Conclusion Regarding Claim 1 Based on the current record, there is a reasonable likelihood that Petitioner will prevail in demonstrating that claim 1 is unpatentable as obvious in view of Rao and Cole.” slip op. at 33
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“Petitioner asserts that “no formal claim constructions are necessary because ‘claim terms need only be construed to the extent necessary to resolve the controversy.’” Pet. 2. Patent Owner agrees with Petitioner’s assertion that “no formal claim construction is necessary” at this stage in the proceeding. Prelim. Resp. 6. For the purposes of this Decision, we need not expressly construe any claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and only to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,277,433 - PTAB · Mar 8, 2024 · IPR2023-01271 · APJ Christopher L Ogden · IPR · Institution
The Board instituted IPR of claims 1 and 2 on all petitioned grounds, finding a reasonable likelihood that Lemay alone or with Alfke renders the claims unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“under 37 C.F.R. § 42.4(a), we may institute an inter partes review when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see also 37 C.F.R. § 42.108(c) (2023). Applying that standard, we institute an inter partes review of all the challenged claims of the ’839 patent for the reasons explained below. This is a preliminary decision, and we will base our final written decision on the full trial record.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Neither party suggests that any claim term departs from its ordinary and customary meaning, and we are aware of no evidence at this stage to suggest otherwise. And for our decision, we do not need to construe any of the terms explicitly. 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))). We discuss the claim terms below in the context of the prior art.” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“limitations 1.e(i)–(ix) in view of Alfke. LG sufficiently demonstrates the motivation to combine Lemay with Alfke because Lemay specifically teaches that Alfke’s message-processing disclosures are applicable to the embodiments in Lemay. Ex. 1005, 11:33–41; Pet. 5 n.2; Ex. 1003 ¶ 57. Alfke likewise specifically teaches that its disclosures are applicable to Lemay’s user interface. Ex. 1006, 11:4–12. Pantech also argues that LG’s obviousness arguments based on Lemay are deficient because they are conclusory, provide insufficient rationale, and incorporate material by reference from Dr. Madisetti’s declaration. Prelim. Resp. 28–30. We disagree that LG’s arguments are deficient in this respect because, to the extent (if any) that Alfke is not incorporated by reference into Lemay, the motivation to combine the references appears to be set forth in the references themselves.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,283,839 - PTAB · Feb 21, 2024 · IPR2023-01281 · APJ Stacey G White · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–23 on all asserted § 103 grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” The following findings of fact and conclusions of law are not final, but are made for the sole purpose of determining whether Petitioner meets the threshold for initiating review. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to all of the challenged claims of the ’878 patent on all of the asserted grounds.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “would have possessed a bachelor’s degree in electrical engineering or computer science, 8 U.S. Pat. Pub. 2006/0282328 A1, published Dec. 14, 2006 (Ex. 1010, “Gerace”). and two years of work experience in the field of network-based computer systems, such as systems for sending and receiving information over local networks and wide area networks (such as the Internet or World Wide Web).” Pet. 5 (citing Ex. 1002 ¶¶ 10–14). At this time, Patent Owner does not challenge Petitioner’s description of the level of ordinary skill in the art. Prelim. Resp. 3. We are persuaded that Petitioner’s description is consistent with the prior art and patent specification. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). For purposes of this Decision, we adopt Petitioner’s description.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner “does not believe claim construction is necessary at this time.” Pet. 7. Patent Owner “does not believe that any terms require express construction to resolve the parties’ dispute.” Prelim. Resp. 4. We determine that no claim terms require express construction for purposes of this Decision.” slip op. at 8
- Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference is prior artDecided for petitioner
“b) Entitlement of Baig to Earlier Effective Filing Date Petitioner asserts that Baig is entitled to the November 10, 2006 filing date of Provisional Application No. 60/858,204 (Ex. 1004, “’204 Provisional”), and is prior art to the ’878 Patent under pre-AIA 35 U.S.C. § 102(e). Pet. 9. Petitioner asserts that the ’204 Provisional provides support for the disclosure of Baig and provides § 112 support for at least one claim in Baig. Id. Petitioner asserts that there are no material differences between Baig and the ’204 Provisional. Id. at 10 (citing Ex. 1002 ¶ 43 (citing Ex. 1005 (redline comparison of Ex. 1003 and Ex. 1004))). Petitioner further contends that the ’204 Provisional includes 17 claims that are identical to the claims in Baig, and, therefore, provides written description support for the corresponding claims in Baig. Id. Petitioner also asserts the ’204 Provisional provides enablement. Id. At this preliminary stage in which Patent Owner has not challenged the status of Baig as prior art, Petitioner has shown sufficiently that Baig is entitled to the earlier effective filing date of the ’204 Provisional Application. Although the burden of production may shift between the parties during trial, the burden of persuasion to show that Baig is entitled to an earlier effective filing date always remains with Petitioner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379–80 (Fed. Cir. 2015).” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 10,715,878 - PTAB · Feb 15, 2024 · IPR2023-01224 · APJ James A Tartal · IPR · Institution
Instituted review of claims 1, 2, 7, 10, 11, and 14 on all petition grounds; the Board found a reasonable likelihood of success on obviousness over Ogawa and Yoshioka.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“inter partes review in this case because, although there is no evidence that a stay exists or may be granted in district court, the value of any potential stay in reducing the likelihood of duplication of effort is minimal where, as here, there is no trial date and the district court already determined the Challenged Claims do not recite patent-eligible subject matter. Thus, there is no suggestion that the district court will have reason to consider the issues of obviousness presented here after a trial date is set. Factor 2 favors institution as it is undisputed that no trial date was set in district court.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Petitioner, we find Petitioner sufficiently shows for purposes of institution that the asserted combination of Ogawa and Yoshioka teaches every limitation of claim 1 and that one of ordinary skill in the art would have had sufficient reason to combine Ogawa and Yoshioka and would have had a reasonable expectation of success in doing so.” slip op. at 25
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“feedforward term, “target timing displacement IVTDt.” Pet. 36 (citing Ex. 1006, 7:41–45). Petitioner contends “Yoshioka determines its target timing displacement IVTDt by first calculating a correction coefficient Lpa based on an atmospheric pressure signal PA,” and “then determining the initial valve displacement IVTD0 based on engine load GN and engine speed NE.” Id. Finally, Petitioner contends “Yoshioka’s valve feedforward term IVTDt is calculated based on IVTD0 and Lpa.” Id. Petitioner proposes that “modifying Ogawa’s valve feedforward term to account for atmospheric pressure, as taught by Yoshioka, would ‘improve the output of an engine at high altitude under high load, as well as reducing fuel consumption and improving exhaust purifying performance at high altitudes under low/medium load.’” Id. at 36–37 (citing Ex. 1006, 1:44–49; Ex. 1003 ¶¶ 91–96); see also Pet. 29 (asserting that a person of ordinary skill in the art “would have had a reasonable expectation of success of applying Yoshioka’s teachings to Ogawa’s valve timing control methods,” because Ogawa’s engine control unit “already receives signals representing atmospheric pressure and engine speed, and . . . sets its engine performance command PMCMD according to a particular engine load”).” slip op. at 23
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,557,540 - PTAB · Jan 29, 2024 · IPR2023-01032 · APJ Scott B Howard · IPR · Institution
Instituted IPR on claims 1–7 on all asserted grounds; the Board found a reasonable likelihood that Suzuki, Cullen, and Scherer render at least claim 1 obvious.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When 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) (2022).” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In performing an analysis under § 325(d), “the Board uses the following two-part framework: 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. . . . If, after review of [Becton Dickinson] factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8, 10 (PTAB Feb. 13, 2020) (Institution Decision) (precedential) (footnote omitted). Consequently, we first turn to an analysis of Becton Dickinson factors (a), (b), and (d) to determine 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.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Scherer also teaches using a high pass filter to filter a torque demand signal. See Ex. 1003 ¶ 99; Ex. 1007, 3:59–63, 4:20–45, Figs. 1, 2. rapidly to sudden changes of the engine torque” arising during transient engine operations. Ex. 1007, 4:20–4:31; see also id. at 4:31–5:15; Ex. 1003 ¶ 100. A person having ordinary skill in the art would have included Scherer’s high pass filter in Suzuki’s torque controller to produce the Spark Timing Correction for a Homogeneous Mode and the Equivalence Ratio for Stratified Mode because it would enable the system to adjust for dynamic changes in torque values more accurately. Ex. 1003 ¶ 100; see also id. ¶¶ 65–69.” slip op. at 28
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“We do not agree with Patent Owner that Scherer teaches away from the claimed invention. First, Scherer is not limited to Diesel engines. Although the Figure 2 embodiment discusses a Diesel engine, the Figure 1 embodiment involves an Otto engine that uses spark plugs. See Ex. 1007 Figs. 1–2, 3:59–60, 5:16–18. Second, a reference teaches away from the claimed invention if “a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). The discussion of using a high pass filter with a Diesel engine, “does not teach away” from using a high pass filter with a DISI engine as “it merely expresses a general preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 6,581,565 - PTAB · Jan 23, 2024 · IPR2023-01031 · APJ Scott B Howard · IPR · Institution
The Board instituted inter partes review of claims 1, 2, 4–7, and 9–13 on all asserted grounds, finding a reasonable likelihood of unpatentability and declining discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Inter partes review may not be instituted unless “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). “When 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) (2022). For the reasons set forth below, upon considering the briefing and the evidence of record, we determine that the information presented in the Petition establishes a reasonable likelihood that Petitioner will prevail with respect to at least one of the challenged claims. Accordingly, we institute inter partes review on all of the challenged claims based on all of the grounds identified in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“We are persuaded by Petitioner’s argument. As the parties agree, the petitioner in the Volkswagen IPR relied on Luff. See Pet. 23; Prelim. Resp. 20. In that proceeding, we denied institution because the petition did not sufficiently show that Luff teaches or suggests “waste production data” as recited in claims 1 and 9. Volkswagen, IPR2020-00894, Paper 11 at 11–14. However, neither Amaratunga nor Seem were considered during the prosecution of the ’482 patent or the Volkswagen IPR. Pet. 23; Prelim. Resp. 22. Moreover, Petitioner relies on Amaratunga in combination with Luff to teach “waste production data,” the limitation we found missing in the Volkswagen IPR. See Pet. 39–41. Additionally, to the extent Petitioner relies on Luff, Petitioner is relying on a different section of the reference than was raised in the Volkswagen IPR. Compare Pet. 39–41 (relying on 5:57–6:26), with Volkswagen, IPR2020-00894, Paper 2 (relying on 9:24–31, 17:65–18:3). The Office never considered this combination either during the prosecution of the ’482 patent or during the Volkswagen IPR. Furthermore, we do not agree with Patent Owner that Amaratunga and Seem are substantially the same and cumulative to references asserted in the Volkswagen IPR. Patent Owner neither identifies how the references are cumulative of Amaratunga and Seem nor why the references are cumulative Amaratunga and Seem. Although, at a very high level, Amaratunga and Seem involve the same technology as the references asserted in the Vokswagen IPR, that is not enough. The issue is not just whether the same elements can be found in each of the references, but whether the elements function the same way. Patent Owner does not provide any explanation as to how both Amaratunga and Seem operate or how their operations are substantially the same as the operations disclosed by the references asserted in the Volkswagen IPR. See Prelim. Resp. 20. Accordingly, we are not persuaded by Patent Owner that Amaratunga and Seem are substantially the same as references the Office previously considered. 3. Conclusion Because we find that the evidence of record demonstrates that Becton Dickinson factors (a), (b), and (d) have not been satisfied, we find that the same or substantially the same art or arguments were not previously presented. Thus, our analysis ends at this point, and we need not proceed to part two of the Advanced Bionics framework. See Advanced Bionics, IPR2019-01469, Paper 6 at 8. We consequently decline to exercise our discretion to deny institution based on 35 U.S.C. § 325(d).” slip op. at 13
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“If factors one through five do not favor discretionary denial, “the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 4–5 (PTAB Feb. 27, 2023) (precedential, decision upon Director Review). But if factors one through five favor discretionary denial, “the Board shall then assess compelling merits.” Id. at 5; see also Volvo Penta v. Brunswick Corp., IPR2022-01366, Paper 15 at 4–5 (PTAB May 2, 2023) (Director Review) (holding that the PTAB must perform a compelling merits analysis even when the District Court has already invalidated the challenged claims under 101, but the decision is still pending appeal if the Board determines that Fintiv factors 1–5 favor exercise of discretion to deny institution.) Here, on balance, factors one through five favor discretionary denial. See supra §§ II.E.1–II.E.5 (finding that five factors favor discretionary denial and one factor does not favor discretionary denial). Because factors one through five favor discretionary denial, we assess compelling merits. See CommScope, IPR2022-01242, Paper 23 at 5. To provide better context when doing so, however, we assess compelling merits after addressing the patentability issues. See § II.H, infra. Based on the current record and for the reasons explained below, we determine that Petitioner presents compelling evidence of unpatentability for at least one challenged claim. See § II.H, infra.” slip op. at 18
- Skill levelSkill level petitioner adoptedDecided for petitioner
“On one hand, Patent Owner presents only attorney argument, unsupported by any evidence. See Prelim. Resp. 8. Accordingly, we give it no weight. Elbit Systems of America, LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018) (“‘[a]ttorney argument is not evidence’ and cannot rebut other admitted evidence” (quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017))); Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (unsworn attorney argument is not evidence). On the other hand, Petitioner’s formulation is supported by conclusory testimony which does not provide supporting evidence or reasoning. See Ex. 1003 ¶¶ 49–50. We give such testimony little weight. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Although we give Dr. Bower’s testimony little weight, it is consistent with the invention disclosed in the ’482 patent, which claims using a computer to a calculate an ecological parameter based on power consumption and waste production data. Accordingly, for purposes of this Decision, we adopt Petitioner’s formulation of the person having ordinary skill in the art.9” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,909,482 - Microsoft Corporation v. Softex, LLCInstitutedPTAB · Jan 17, 2024 · IPR2023-01185 · APJ Thu A Dang · IPR · Institution
The Board instituted IPR on claims 1–25, finding a reasonable likelihood that claims 1–5, 7–13, 15–21, and 23–25 are obvious over Andrews and the other asserted grounds warrant review.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityDecided for petitioner
“This inquiry, however, is not always necessary at the institution stage. As the Board explained in a precedential decision, the failure to name a real party in interest is not jurisdictional. Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739, Paper 38 at 6 (PTAB March 4, 2016) (precedential). The Board in another precedential decision explained that, at the institution stage, we need not address whether a party is an unnamed RPI unless the time bar or estoppel provisions under 35 U.S.C. § 315 would be implicated. SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 at 18 (PTAB Oct. 6, 2020) (precedential). In SharkNinja, there was “no allegation that Petitioner’s failure to name [the third party] as an RPI should result in termination of the proceeding or denial of institution for review other than” for an alleged procedural violation of 35 U.S.C. § 312(a)(2), nor was there any “allegation or evidence that [the third party] [wa]s barred or estopped from th[at] proceeding, or that Petitioner purposefully omitted [the third party] to gain some advantage.” Id. at 18–20 (footnote omitted). Due to the lack of allegations regarding either a time bar or estoppel, the Board declined to decide the RPI issue at the institution stage because deferring that decision for after institution “better serves the interest of cost and efficiency.” Id. at 19–20 (footnote omitted). In its Preliminary Response, although Patent Owner makes a passing reference to “estoppel” (Prelim. Resp. 26 (“engaging in bad faith gamesmanship by attempting to shield clear beneficiaries from estoppel implications”)), Patent Owner does not set forth any allegations regarding time bar or estoppel with respect to Petitioner’s alleged failure to name the PC Manufacturers as RPIs. We agree with Petitioner that “[w]hether such third parties are real parties-in-interest should not be resolved in this proceeding because it has no impact on this proceeding,” and that “a determination that these parties are real parties-in-interest would not result in the application of any estoppel or time-bar under 35 U.S.C. § 315.” Pet. vii (citing Unified Patent, Paper 76, 5). In its Sur-reply, Patent Owner adds that Petitioner “obtained the PC Manufacturer’s contentions, copied them, and refused to be estopped,” wherein “[h]ad the PC Manufacturers been properly listed as RPIs, they would unquestionably be estopped.” PO Prelim. Sur-reply 3. However, Patent Owner’s speculation as to PC Manufacturers’ future estoppel does not set forth an allegation of estoppel in this proceeding. As Petitioner points out, “the PC Manufacturers have not filed (or been RPI) in any other proceeding before the Board regarding, nor filed civil actions asserting invalidity of, the ’649 patent.” Pet. Prelim. Reply 2. Further, as Patent Owner acknowledges, the district court proceedings in the Texas litigations against PC Manufacturers were filed on December 14, 2022, less than one year before Petitioner filed this IPR petition. Prelim. Resp. 19–20. As Petitioner further points out, “[t]he PC Manufacturers were not time-barred at filing, and [Petitioner] can amend its mandatory notices if required and maintain its original filing date.” Pet. Prelim Reply 2. Therefore, neither § 315(b) nor any other estoppel or time bar would have precluded PC Manufacturers from petitioning for IPR on their own at the time of filing of this Petition. Without an implication of time bar or estoppel provisions under 35 U.S.C. § 315 in this proceeding, we decline to decide whether the PC Manufacturers should have been named RPIs in this Petition at the institution stage.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“When determining whether to exercise discretion to deny institution in view of a parallel proceeding, we consider the following factors: 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; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. See Apple Inc. v. Fintiv, Inc., IPR2020 00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv factors”). “These factors relate to 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.” Id. In evaluating the Fintiv factors, we take “a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review,” recognizing that “there is some overlap among these factors” and that “[s]ome facts may be relevant to more than one factor.” Id.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“C. Claim Construction We construe each claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b). Under this standard, claim terms are generally given their plain and ordinary meaning as would have been understood by a person having ordinary skill in the art (POSITA) at the time of the invention and in the context of the entire patent disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). Petitioner contends that “no express constructions are necessary.” Pet. 9 (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Patent Owner contends that it “does not believe express claim construction is necessary for any claim terms because no terms are in controversy.” Prelim. Resp. 18. At this time, we determine that no terms of the challenged claims require explicit construction. See, e.g., 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., 200 F.3d at 803)).” slip op. at 20
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion For the foregoing reasons, we determine that the evidence and arguments presented show a reasonable likelihood that Petitioner would prevail in establishing that claims 1–5, 7–13, 15–21, 23–25 would have been obvious over Andrews. (2) Anticipation by Andrews Petitioner contends that claims 1–5, 7–13, 15–21, 23–25 of the ’649 patent also are anticipated by Andrews, but provides the same arguments discussed above for the obviousness grounds. Pet. 9–48. Patent Owner responds with the same arguments discussed above for the obviousness ground based on Andrews. Prelim. Resp. 39–49. Thus, at this stage of the proceeding, we do not separately address Petitioner’s anticipation ground based on Andrews. Nonetheless, Patent Owner may raise arguments regarding this anticipation ground in the Response after institution.” slip op. at 40
Claim constructionDiscretionary denialcites KSR · GrahamPatents in suitUS 8,506,649 - PTAB · Aug 3, 2023 · IPR2023-00441 · APJ Gregg I Anderson · IPR · Institution
Instituted inter partes review of claims 1–15 and 17–18 on all asserted grounds after finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“4. Analysis We are not persuaded to deny institution based on Section 325(d). Although Li was previously presented to the Office under part 1 of Advanced Bionics, as Petitioner acknowledges, Kim was not. Even were we to discount Li because of Section 325(d), the challenge here is not based solely on Li. Some grounds rely on Kim. See Pet. 3. Kim differs from Li and the Kim and Li combination was not previously considered. These differences provide a separate basis for the challenge presented here. Kim was not presented to the Examiner during prosecution.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDecided for petitioner
“Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation, available at https://www.uspto.gov/sites/ default/files/documents/interim_proc_discretionary_denials_aia_parallel_ district_court_litigation_memo_20220621_.pdf (the “Interim Procedure”). The Interim Procedure explains that “[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.” Interim Procedure 3 (internal footnote omitted) (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020- Interim Procedure explains that such a Sotera stipulation “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB . . . . [and] allows the PTAB to review grounds that the parallel district court litigation will not resolve.” Id. at 7–8. In this proceeding, Petitioner stipulates that “it will not pursue an invalidity defense in the parallel district court action based on the same grounds as in this petition or any grounds that could have reasonably been raised before the PTAB.” Pet. Prelim. Reply 3. Petitioner asserts that its stipulation is consistent with the one in Sotera. Id.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“For the reasons set forth above, Petitioner has shown a reasonable likelihood that claim 1 would have been anticipated by Li.” slip op. at 32
- Skill levelSkill level petitioner adoptedDecided for petitioner
“invention of the ’430 patent “would have had an undergraduate degree in electrical engineering, computer engineering, computer science or a related field along with at least two years of work experience in the field of wireless communication technology. More education can supplement practical experience and vice versa.” Pet. 6 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not propose a level of ordinary skill. See Prelim. Resp. 33–35. Petitioner’s proposal is consistent with the level of ordinary skill in the art reflected by the asserted prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). On this record, the level of ordinary skill is neither in dispute nor dispositive of any challenge. For purposes of this Decision, we apply Petitioner’s articulation.” slip op. at 19
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,448,430 - Google LLC v. Ecofactor, Inc.InstitutedPTAB · Jun 6, 2023 · IPR2023-00356 · APJ Paul J Korniczky · IPR · Institution
The Board instituted IPR on claims 1–16 based on a reasonable likelihood of prevailing on the asserted obviousness grounds and granted Google’s motion to join the ecobee IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018).” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“A motion for joinder should (1) set forth reasons why joinder is appropriate; (2) identify any new grounds of unpatentability asserted in the petition; (3) explain what impact (if any) joinder would have on the trial schedule for the existing review; and (4) address specifically how briefing and discovery may be simplified. Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013).” slip op. at 6
NonePatents in suitUS 8,596,550
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.