- Microsoft Corporation / HP Inc. et al. v. Litl LLCAdverse judgmentPTAB · Oct 10, 2024 · IPR2024-00456 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–9, 15–22, and 24–27.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding,” and states that “disclaimer of a claim such that the party has no remaining claim in the trial” will be construed as a request for adverse judgment. Under these circumstances, we grant Patent Owner’s motion for adverse judgment. ORDER It is: ORDERED that Patent Owner’s Motion for adverse judgment (Paper 28) is GRANTED, and FURTHER ORDERED that judgment is entered against Patent Owner with respect to claims 1–9, 15–22, and 24–27 of the ’888 patent.” slip op. at 2
NonePatents in suitUS 8,612,888 - PTAB · Oct 8, 2024 · IPR2024-00432 · APJ Frederick C Laney · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that Comcast would show at least one claim unpatentable over Zhang.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). slip op. at 12
- Parallel petitionsDenied
“petitions, Petitioner filed a Petition Ranking and Explanation of Material Differences Between Petitions, ranking its three petitions directed to the ’362 patent in accordance with the guidance with respect to parallel petitions in the Board’s November 2019 Consolidated Trial Practice Guide. Paper 3; see Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019, “CTPG”), at 59–60 (available at Available at https://www.uspto.gov/ TrialPracticeGuideConsolidated). In that Paper, Petitioner ranked the instant Petition first. Paper 3, 1.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA” or “skilled artisan”) “would have had a degree in electrical engineering or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that “[a]dditional education may substitute for professional experience, and significant work experience may substitute for 8 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. formal education.” Pet. 20 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Claim Construction We apply the same claim construction standard used in district court actions under 35 U.S.C. § 282(b), namely that articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b) (2021). In applying that standard, claim terms generally are given their ordinary and customary meaning as would have been understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure. Phillips, 415 F.3d at 1312–13. “In determining the meaning of the disputed claim limitation, we look principally to the intrinsic evidence of record, examining the claim language itself, the written description, and the prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). Petitioner states that “[a]ll claim terms herein should be given their” slip op. at 13
Claim construction§ 102 anticipationDiscretionary denialcites PhillipsPatents in suitUS 9,210,362 - PTAB · Oct 4, 2024 · IPR2024-00438 · APJ Michelle N Wormmeester · IPR · Institution
Instituted IPR on claims 1–76 and all asserted challenges because the Petition showed a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG 59–60. For reasons given in our concurrent decisions denying institution in IPR2024-00439 and IPR2024-00440, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed decisions for these petitions. Given our decisions to deny institution in IPR2024-00439 and IPR2024-00440, Patent Owner’s arguments on the need for more than one petition are unavailing with regard to the instant Petition. In view of the foregoing, we decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a) in this proceeding.” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to all the challenged claims of the ’206 patent based on all the challenges raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA, as they would be given in a civil action under 35 U.S.C. § 282(b),” where POSITA stands for “person of ordinary skill in the art.” Pet. 18. Petitioner further notes that “the ’206 patent defines ‘wideband’ as a band that carries multiple channels.” Id. at 18–19 (citing Ex. 1001, 1:36–39). Patent Owner does not respond. At this stage, on the record before us, we determine that no claim term requires express interpretation to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Based on Petitioner’s arguments and evidence, we are persuaded that Petitioner has shown sufficiently for purposes of this Decision that Zhang teaches the recited “digitizing” step of element 1C. For example, Zhang teaches that its ADC 220 “converts the down-converted multi-channel analog RF signal to a multi-channel digital RF signal.” Ex. 1013 ¶ 27 (cited by Pet. 22). Zhang explains that “many modifications, variations, alternatives, and equivalents . . . are intended to be within the scope of [its] invention,” and gives the example that “the RF channels need not be contiguous.” Id. ¶ 48 (cited by Pet. 22). We agree with Petitioner that Zhang’s example teaches or suggests that the RF channels may be contiguous. Zhang further describes “demultiplex[ing] the multi-channel digital RF signal into separate digital RF channels C1 to Cn,” which “contain content channels that are selected or used by a subscriber.” Id. ¶ 28 (cited by Pet. 22). Zhang describes filtering the RF channels so that “only the target RF channel passes.” Id. ¶ 32 (cited by Pet. 23). In addition, Zhang describes “select[ing] one or more of the RF channels D1 to Dm from one or more of the digital RF channels C1 to Cn,” where “only the selected channels are later demodulated unlike the systems using RF tuners which demodulate all of the RF channels.” Id. ¶ 28.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,399,206 - PTAB · Oct 1, 2024 · IPR2024-00435 · APJ Lynne H Browne · IPR · Institution
The Board instituted review of claims 1–82 on all grounds, finding a reasonable likelihood that Comcast would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). An inter partes review may not be instituted unless it is determined that “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). For the reasons discussed below, we determine, based on the record before us, that there is a reasonable likelihood Petitioner would prevail in showing at least one of the challenged claims is unpatentable. Furthermore, we deny Patent Owner’s request for us to exercise our discretion to deny institution in this proceeding based on Petitioner’s filing of two additional parallel petitions challenging the same claims. We therefore institute inter partes review on all claims and all grounds. See SAS Inst. Inc. v. Iancu, 584 U.S. 357 (2018).” slip op. at 2
- Parallel petitionsDenied
“We do not agree with Patent Owner that Petitioner’s filing of three parallel petitions is grounds to deny all three petitions on that basis alone. See Prelim. Resp. 4–30. As discussed above, Petitioner has complied with our guidance. See CTPG, 59–60. For reasons discussed in our concurrent Decisions Denying Institution in IPR2024-00436 and IPR2024-00437, however, we agree with Patent Owner that plural petitions are not warranted and we deny institution in the concurrently filed Decisions for these petitions. Given our Decisions to Deny Institution in IPR2024-00436 and IPR2024-00437, Patent Owner’s arguments regarding the need for more than one petition are unavailing with regard to the instant Petition.” slip op. at 11
- Skill levelSkill level petitioner adoptedOther
“Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art (“POSITA”) “would have had a degree in electrical engineering, or a similar discipline, along with three-to-four years of experience with digital signal processing and RF tuning systems for satellite and/or cable communications,” and that 6 Patent Owner does not present objective evidence of nonobviousness at this stage of the proceeding. See generally Prelim. Resp. “[a]dditional education may substitute for professional experience, and significant work experience may substitute for formal education.” Pet. 15– 16 (citing Ex. 1002 ¶¶ 30–32). Patent Owner does not address level of ordinary skill in the art. See generally, Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “[a]ll claim terms herein should be given their ordinary and customary meaning to a POSITA as they would be given in a civil action under 35 U.S.C. § 282(b).” Pet. 16. Yet, Petitioner proposes claim construction for “wideband” and “digital down converter” / “digital front end.” Id. at 16–19. Patent Owner does not address claim construction. See generally, Prelim. Resp. For purposes of this Decision, we determine that no aspects 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., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 11,381,866 - HP Inc. / Dell Technologies Inc. et al. v. Litl LLCAdverse judgmentPTAB · Oct 1, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed all challenged claims: 1, 3, 4, 7-10, 13, 14, 16-18, and 22.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Rule 42.73(b) permits a party to “request judgment against itself at any time during a proceeding,” and states that “disclaimer of a claim such that the party has no remaining claim in the trial” will be construed as a request for adverse judgment. Under these circumstances, we grant Patent Owner’s motion for adverse judgment.” slip op. at 2
NonePatents in suitUS 8,624,844 - US Conec Ltd. v. Senko Advanced Components, Inc.Rehearing grantedPTAB · Sep 16, 2024 · IPR2024-00122 · APJ Barbara A Parvis · IPR · Rehearing
The Board granted the petitioner's request to withdraw its rehearing request and granted the joint motion to terminate the proceeding.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties. III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that Petitioner’s request for withdrawal of its Request for Rehearing (Paper 8) is granted; and” slip op. at 2
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“agreement to jointly seek termination of this proceeding, and “[b]ased on the settlement, Petitioner hereby requests withdrawal of its Request for Rehearing.” Joint Motion 1. We “may enter non-final orders to administer the proceeding.” 37 C.F.R. § 42.5. Here, the Board has not decided the merits of Petitioner’s Request for Rehearing. Additionally, we stated in our Decision Denying Institution that “the Petition is denied, and no trial is instituted.” Paper 7, 22. Under these circumstances, therefore, we determine that it is appropriate to grant the request to withdraw Petitioner’s Request for Rehearing and terminate this proceeding as to the Parties.” slip op. at 2
NonePatents in suitUS 11,061,190 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. 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)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690 - PTAB · Sep 3, 2024 · IPR2024-00446 · APJ Barbara A Parvis · IPR · Institution
The Board instituted IPR on claims 1–20 and all petition grounds after finding a reasonable likelihood that claims 1, 14, and 18 are obvious over Rabenko and Kim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“U.S.C. § 314 and 37 C.F.R. § 42.4. We may 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.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningDecided for petitioner
“Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips, 415 F.3d at 1312–17). At this early stage in the proceeding, we find that nothing in the language of the independent claims explicitly requires a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. Additionally, we do not find any definition or disclaimer (explicit or implicit) in the intrinsic record to limit the independent claims a controller that processes blocks 200 through 212 shown in Figure 2 of the ’775 patent. See Trustees of Columbia University v. Symantec, 811 F.3d 1359, 1363–64 (Fed. Cir. 2016).” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this preliminary stage, we find that the evidence of record supports Petitioner’s position that limitation [18D] is taught by the combined teachings of Rabenko and Kim and Petitioner has provided sufficient reasoning to combine those teachings. We find that Patent Owner’s arguments (Prelim. Resp. 32–56) and Dr. Russ’s testimony (Ex. 2003 ¶¶ 91– 131) do not undermine Petitioner’s showing. Accordingly, we determine Petitioner has shown sufficiently for the purpose of institution that Rabenko and Kim teaches limitation [18D] of claim 18.” slip op. at 33
- Parallel petitionsDenied
“40 asserted grounds are voluminous and excessive. Prelim. Resp. 7, 56–58 (citing Adaptics Ltd. v. Perfect Company, IPR2018-01596, Paper 20, 18 (Mar. 6, 2019) (informative) (“Adaptics”); Uber Technologies, Inc. v. Surgetech LLC, IPR2023-00738, Paper 8 (Oct. 23, 2023); Energysource Minerals, LLC, v. Terralithium LLC, IPR2019-01607, Paper 10, 13 (May 4, 2020) (similar)); see also Prelim. Resp. 4. In particular, Patent Owner argues the Petition asserts “at a minimum 40 separate grounds (grounds ‘A’ through ‘NN’), involving eight separate references, challenging claims 1– 20” and “[t]his ‘voluminous and excessive’ number of grounds is an independently sufficient reason to deny institution.” Id. (citing Adaptics, 18). Petitioner challenges claims 1–20. Pet. 9. Fourteen claims, specifically claims 1–7, 10, 12, 14, 15, and 18–20, are challenged on the basis of four grounds, specifically Grounds A–D. Id. Petitioner relies on Lu for teaching a RISC processor recited in claims 1 and 14. Id. at 43–45. Petitioner submits one or two additional references for dependent claims 8, 9, 11–13, 16, and 17. Id. at 10. In view of the above, as well as the complexity of the technology and detailed nature of certain of Petitioner’s arguments, we decline to exercise discretion and deny institution on the basis of the number of grounds asserted.” slip op. at 42
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,223,775 - Apple Inc. v. RJ Technology, LLCInstitutedPTAB · Aug 20, 2024 · IPR2024-00597 · APJ Jon B Tornquist · IPR · Institution
The Board instituted review of claims 1–18 on all asserted grounds and granted Apple’s motion to join IPR2023-01183.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’641 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’641 patent on all the grounds of unpatentability set forth in the Petition. And, for the reasons set forth below, we grant Petitioner’s Motion for Joinder.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“In considering a motion for joinder, and whether such joinder is appropriate, the Board may consider “whether a new ground of unpatentability is raised in the second petition, how the cost and schedule of the first proceeding will be impacted if joinder is granted, and whether granting joinder will add to the complexity of briefing and/or discovery.” Patent Trial and Appeal Board Consolidated Trial Practice Guide November 20197 at 76 (citing Kyocera Corp. v. SoftView LLC, IPR2013-00004, Paper 15 at 4 (PTAB Apr. 24, 2013)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a Master’s degree in material science, chemical engineering, chemistry, or similar field with four years experience designing testing, and building secondary lithium batteries.” Pet. 11 (citing Ex. 1002 ¶ 51). Petitioner further contends that a person of ordinary skill in the art would have been aware of “(1) positive electrode materials, (2) negative electrode materials, (3) separators, (4) electrolytes, (5) charge-discharge parameters, and (6) protection circuits, as well as ‘battery failure modes’ such as plating and the formation of dendrites.” Id. at 11–12 (citing Ex. 1002 ¶¶ 50–51). Upon review of the prior art of record and the Petitioner’s arguments, we adopt Petitioner’s uncontested definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the ’641 patent and the prior art of record.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner provides constructions for the terms “A method for improving . . . characterized in that,” “ratio of positive electrode material to negative electrode material as calculated by a theoretic capacity with a charge cut-off voltage set at 4.2 V” (claim 5), “as calculated by a specific capacity with a charge voltage limited to 4.2 V” (claim 1), and “at least 7500 of capacity” (claim 11). Pet. 8–11. For purposes of this decision, we determine that no claim terms require express construction. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.”)).” slip op. at 8
Claim constructioncites Phillips · KSR · GrahamPatents in suitUS 7,749,641 - PTAB · Jul 9, 2024 · IPR2024-00120 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1, 2, 6, 9, 11, and 26–34 on all asserted grounds, finding a reasonable likelihood of prevailing on the § 103 challenges.
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. Any final decision shall be based on the full trial record, including any response timely filed by Patent Owner. Any arguments not raised by Patent Owner in a timely-filed response may be deemed waived.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Not reached
“2 While the ’230 patent is currently involved in a parallel district-court case, Petitioner argues that “[i]nstitution is appropriate under Fintiv . . . .” Pet. 157. Petitioner also states that “if this proceeding is instituted, Petitioner stipulates not to pursue in the district court the grounds in the Petition or any ground that reasonably could have been raised in the Petition.” Id. Patent Owner does not challenge Petitioner’s argument. Accordingly, and in view of Petitioner’s stipulation, it is not necessary to reach Petitioner’s discretionary denial arguments. See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 18–19 (PTAB Dec. 1, 2020) (precedential as to section II.A)).” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had a bachelor’s degree (B.S.) in mechanical engineering, industrial engineering, or a closely related field and one year of experience working with connectors.” Pet. 7 (citing Ex. 1004 ¶¶ 5–17, 79–84). For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’230 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art). slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, 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. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 10,191,230
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.