- PTAB · Jul 11, 2023 · IPR2023-00318 · APJ Jason W Melvin · IPR · Institution
The Board instituted inter partes review of claims 56–87 based on the asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail on at least one claim.
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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelOther
“Prelim. Resp. 9. Neither party, however, explains the significance of its proposed level of ordinary skill and we determine any difference between the proposed 9 The ’551 patent claims priority as follows: “The present application claims the benefit under 35 U.S.C [§] 119(e) of U.S. Provisional Application[s] No. 60/395,308 filed Jul. 12, 2002[ and] . . . No. 61/535,981, filed Oct. 17, 2011 . . . . [T]his application is a continuation-in-part application of, and claims the benefit under 35 U.S.C. [§]120 from, U.S. [App.] No. 10/604,360, . . . filed on Jul. 14, 2003.” Ex. 1001, 1:4–19. levels of skill does not affect our determination here. We note that defining the level of skill as including “at least” a certain amount of experience renders the definition ambiguous. To the extent either party believes a difference between the two proposed definitions affects this proceeding, that party should explain how in the instituted trial.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 7–10; Prelim. Resp. 9–10. We agree and therefore do not construe the claims for this decision. 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)). To the extent the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Patent Owner argues also that the Petition lacks an adequate reason for the combination. Prelim. Resp. 58–59. According to Patent Owner, the Petition is deficient because it lacks “evidence that Beam does not already accurately ‘track the location of the upcoming vehicle.’” Id. at 58 (quoting Pet. 20). But Beam already tracking upcoming vehicles does not undermine a reason to also use Satonaka’s teachings. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023) (noting that a challenger need not show the combination “was an ‘improvement’ in a categorical sense” but only that it “was a ‘suitable option’”). For the same reason, we do not find persuasive Patent Owner’s arguments that Petitioner does not “explain any deficiency in Beam’s teaching of tracking the location of the oncoming vehicle” or “any new or different functionality provided by this combination.” See Prelim. Resp. 59. We have reviewed Petitioner’s contentions and evidence, along with Patent Owner’s arguments against institution, and conclude that Petition has shown a reasonable likelihood of prevailing with respect to unpatentability of the independent claims over Beam and Satonaka.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Jun 21, 2023 · IPR2023-00315 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 24–55 on all four asserted obviousness 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
“An inter partes review may not be instituted unless “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Patent Owner argues also that the Petition lacks an adequate reason for the combination. Prelim. Resp. 57–58. According to Patent Owner, the Petition is deficient because it lacks “evidence that Beam does not already accurately ‘track the location of the upcoming vehicle.’” Id. at 57 (quoting Pet. 20). But Beam already tracking upcoming vehicles does not undermine a reason to also use Satonaka’s teachings. See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1381 (Fed. Cir. 2023) (noting that a challenger need not show the combination “was an ‘improvement’ in a categorical sense” but only that it “was a ‘suitable option’”). For the same reason, we do not find persuasive Patent Owner’s arguments that Petitioner does not “explain any deficiency in Beam’s teaching of tracking the location of the oncoming vehicle” or “any new or different functionality provided by this combination.” See Prelim. Resp. 58.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 7–10; Prelim. Resp. 9–10. We agree and therefore do not construe the claims for this decision. 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)). To the extent the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 8
- Skill levelOther
“bachelor’s degree (B.S.) in mechanical engineering, electrical engineering, optical engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems” and “may work as part of a team” listing an example. Pet. 7 (citing Ex. 1003 ¶¶ 44–46, 67). Patent Owner presents a different description, proposing that a person of the level of ordinary skill in the art: would have had a Master’s of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with experience or education in optics and imaging systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical, computer engineering or computer science and having two or more years of experience in the field of optical and imaging systems. Prelim. Resp. 9. Neither party, however, explains the significance of its proposed level of ordinary skill. To the extent either party believes the level of ordinary skill affects this proceeding, that party should explain how in the instituted trial.” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 9,955,551 - PTAB · Jun 21, 2023 · IPR2023-00197 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of all challenged claims on all grounds, finding a reasonable likelihood that at least one claim would be shown unpatentable over the cited prior art.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Patentability Conclusion Because we find that the Beam/Thominet and Karlsson/Harbers combinations disclose the elements of the independent claims and that Petitioner has shown a sufficient rationale to make each combination, we determine that Petitioner has established a reasonable likelihood of proving that at least one claim is unpatentable over the cited prior art. D.” slip op. at 21
- Skill levelSkill level petitioner adoptedDecided for petitioner
“experience in the area of automotive lighting and lighting-control systems” and “may work as part of a team, for example, with computer engineers to integrate, program, etc., controllers and various control inputs to affect control of a given light source.” Pet. 9 (citing Ex. 1003 ¶¶ 42–44). Patent Owner asserts that a person of ordinary skill in the art “would have had a Master of Science Degree (or a similar technical Master Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with experience or education in optics and imaging systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical, computer engineering or computer science and having two or more years of experience in the field of optical and imaging systems.” Prelim. Resp. 9–10 (citing Ex. 2001 ¶¶ 28– 30). For purposes of this analysis, we adopt Petitioner’s proposal, which we find generally consistent with the disclosures of the ’503 patent, except that we omit the qualifier “at least” and set the level of experience at two years. Petitioner’s use of the qualifier “at least two years” introduces ambiguity and may encompass skill levels beyond ordinary. If Patent Owner believes that use of its proposal instead of Petitioner’s as modified would affect the analysis, that should be addressed during the trial. B.” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for petitioner
“We do not agree that we do not need to engage in any claim construction at this time, because some of the arguments being made depend on the meaning of “light source.” On the current record we will interpret that term as the Specification appears to define it: “any system that is capable of receiving an electrical signal and producing light in response to the signal.” Ex. 1001, 17:7–10 (“As used herein, the term ‘light source’, LED or ‘solid state light source’ means any system that is capable of receiving an electrical signal and producing light in response to the signal.”). The Specification further explains that “light source” includes “light emitting diodes of all types, light emitting polymers, semiconductor dies that produce or emanate light in response to current, organic LEDs, electroluminescent strips, and other such systems,” as well as “[i]ncandescent and discharge light sources.” Id. at 17:10–15. We find that no further express claim construction is necessary to resolve the institution question. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (explaining that construction is needed only for terms that are in dispute, and only as necessary to resolve the controversy).” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Petitioner asserts that “[e]ach microbeam is a directional ‘source,’” having its own independent angular position (angle/aiming), that combines to form the headlamp beam; so Beam’s lamp 202 and SLM 203 . . . form at least three directional light sources having different angles/aimings.” Pet. 23–24. We do not agree with Petitioners’ analysis because we find that the “microbeams” are the light itself, not the light source, as we have construed that term. See Section II.B. We find that Beam’s Figure 2 embodiment has just one light source (lamp 202) and, thus, does not meet the different angles limitation.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,894,503 - Crowdstrike, Inc. v. Open Text Inc.InstitutedPTAB · Jun 15, 2023 · IPR2023-00124 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–10, 12, and 15–18 on all asserted grounds; Morris-based grounds met the institution threshold, while Capalik-based grounds did not.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“projected statutory deadline, the Board generally has weighed this fact in favor of exercising authority to deny institution.” Fintiv at 9. The parties agree that, according to median time-to-trial statistics in the Western District of Texas, where the related litigation is pending, the expected trial date for the related litigation is mid-July 2024. Pet. 70; Prelim. Resp. 9. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 9 (District Court Order Granting Third Amended Scheduling Order); Prelim. Resp. 9–10. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about two months later than the deadline for the Board to issue a final written decision. See Pet. 71. This time difference is sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Under § 325(d), we apply a two-part analysis, first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and, if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- BurdenInstitutedInstituted
“3. Summary In view of the foregoing, we determine that Petitioner has demonstrated a reasonable likelihood of showing that independent claims 1, 8, and 16 would have been obvious over Morris alone as well as over Petitioner’s proposed combination of Morris and van Oorschot. Claims 2–4, 9, 10, and 12 depend from claims 1 or 8. Having reviewed Petitioner’s arguments asserting that claims 2, 4, 9, 10, and 12 would have been obvious over Morris alone as well as Petitioner’s arguments asserting that claims 2– 4, 9, 10, and 12 would have been obvious over Morris in combination with van Oorschot, (see Pet. 25–30, 32–35), we also determine that Petitioner has demonstrated a reasonable likelihood of prevailing on its assertions as to these dependent claims.” slip op. at 39
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for petitioner
“On the record before us, at this stage of the proceeding, there does not appear to be any claim construction dispute. Accordingly, for purposes of this Decision, we conclude that no claim term requires express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 9,578,045 - PTAB · May 24, 2023 · IPR2022-01586 · APJ Jason W Melvin · IPR · Institution
Instituted IPR of claims 1–33; the Gotou and Karlsson obviousness ground showed a reasonable likelihood of prevailing as to at least claims 1, 12, and 23.
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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 10–11; Prelim. Resp. 9. We therefore do not construe the claims for this decision. 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)). To the extent the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 6
- Skill levelOther
“engineering, applied physics, or an equivalent field, as well as at least 2 years of industry experience in the area of automotive lighting and lighting-control systems” and “may work as part of a team” listing an example. Pet. 10 (citing Ex. 1003 ¶¶ 41–43). Patent Owner presents a different description, proposing that a person of the level of ordinary skill in the art: would have had a Master’s of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with experience or education in optics and imaging systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical, computer engineering or computer science and having two or more years of experience in the field of optical and imaging systems. Prelim. Resp. 8 (citing Ex. 2001 ¶¶ 28–30). Patent Owner, however, does not explain the significance of the differing levels of ordinary skill proposed. To the extent Patent Owner believes the level of ordinary skill affects this proceeding, it should explain that in the instituted trial.” slip op. at 6
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“4. Reason to Combine Petitioner asserts that a person of ordinary skill “would have been motivated to combine Gotou’s adaptive vehicle headlamp that uses map data as a control input to predict and adjust illumination direction with Karlsson’s controllable LEDs as a light source.” Pet. 55. According to Petitioner, an ordinary artisan would have done so at least because of the “well-known benefits of LEDs.” Id. at 55–59 (listing examples of benefits, including reliability and integration ease). Petitioner contends that replacing Gotou’s lights with Karlsson’s LEDs would have reduced the number of Gotou’s moving parts, creating a less complex but improved system. Id. at 55, 60–65 (explaining that the combination would have been a mere substitution with a reasonable expectation of success). Patent Owner generally suggests that “improving driver safety” is too broad of a rationale to constitute the required “rational underpinning to support the legal conclusion of obviousness.” Prelim. Resp. 28 (citing KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Patent Owner counters that Petitioner failed to meet its burden for institution because Petitioner’s combination is flawed for at least four reasons. Prelim. Resp. 27. We address each of Patent Owner’s arguments below.” slip op. at 10
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,208,029 - Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - PTAB · May 4, 2023 · IPR2022-01500 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 2, 10–13, 23, and 24 based on the petition’s three obviousness grounds.
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 . . . 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). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have had at least a bachelor’s degree in physics, engineering physics, mechanical engineering, electrical engineering, or a related field, and at least two years of work experience in transportation lighting.” Pet. 14 (citing Ex. 1002 ¶¶ 32–35). Patent Owner “disputes Unified’s proposed level of ordinary skill” and proposes that skilled artisans: would have had a Master’s of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with experience or education in optics and imaging systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical, computer engineering or computer science and having two or more years of experience in the field of optical and imaging systems. Prelim. Resp. 16. Patent Owner, however, does not explain the significance of the differing levels of ordinary skill proposed. To the extent Patent Owner 3 German Patent DE 199 23 187 C2, issued May 3, 2001 (Ex. 1006 (certified translation); Ex. 1007 (original)). believes the level of ordinary skill affects this proceeding, it should explain that in the instituted trial.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 14; Prelim. Resp. 16. We therefore do not construe the claims for this decision. 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)). To the extent the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. The “control” limitation Patent Owner argues that the Petition fails to show that the asserted combination discloses “the control limitation in claims 1–22”—“control at least a first plurality of the LED light sources to provide light based at least in part on the determined light change and prior to the motor vehicle reaching the road curvature.” Prelim. Resp. 20. Patent Owner contrasts Gotou’s motor-pivoted single-lamp unit with Harbers’s non-moveable multi-LED system, contending “the applied references are not functionally interchangeable.” Id. Petitioner, however, does not rely on interchanging the mechanical aspects of the two systems. Rather, the combination applies Gotou’s control system with Harbers’s LED light source. Pet. 20–28. Petitioner has adequately supported that Gotou’s control system would determine the desired optical axis, which could then be realized with Harbers’s light sources.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,208,029 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Apr 21, 2023 · IPR2022-01522 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 9, 11, 12, and 17 on all petitioned grounds, finding a reasonable likelihood of success on the Shukla and Dalcher challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the related litigation is mid-July 2024. Pet. 65; Prelim. Resp. 7. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 18; Prelim. Resp. 7. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about four months later than the deadline for the Board to issue a final written decision. See Pet. 66. This time difference is already sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner reasons that, based on such a teaching, it would have been obvious for a person of ordinary skill in the art “to configure Shukla’s injected module to execute stack walk processing upon invocation of an API function in the monitored application memory space.” Id. at 24–25 (citing Ex. 1003 ¶ 107). As an example, Petitioner contends that a skilled artisan “would have understood that Dalcher’s stack walk processing would have been advantageously performed as part of the injected module’s ‘post processing of the results returned by the target function,’” as described by Shukla. Id. at 25 (quoting Ex. 1004 ¶ 54; citing Ex. 1003 ¶ 107). Relying on Dr. Lee’s testimony that “[i]t was well-known for over a decade prior to the ’591 Patent that ‘[t]he call stack of a program execution can be a very good information source for intrusion detection,’” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply the teachings of Dalcher to enable Shukla’s injected module to perform Dalcher’s stack walk processing upon invocation of one of Shukla’s targeted API functions to predictably improve the module’s ability to detect and prevent malware intrusions to improve similar monitoring applications in the same way.” Ex. 1003 ¶ 108 (quoting Ex. 1025); Pet. 25. Patent Owner disputes Petitioner’s reasoning “because a [person having ordinary skill in the art] would never have been motivated to combine the teachings of two fundamentally different monitoring methods where doing so would serve no purpose.” Prelim. Resp. 37. According to Patent Owner, and supported by Dr. Medvidovic’s testimony, a person of ordinary skill in the art “would understand that Shukla’s system would only be capable of processing ‘the results returned by the target function’ for call frames that have completed execution and are no longer on the call stack.” Id. at 38 (citing Ex. 1004 ¶ 54; Ex. 2001 ¶ 101). Because “[t]he post-processing step would relate to only these executed and completed calls,” Patent Owner reasons that “there would be no need for gathering information or Dalcher’s stack walk,” and “Dalcher’s stack walk serves no practical purpose when shoehorned into Shukla’s ‘post processing’ step.” Id. (citing Ex. 2001 ¶ 101). Patent Owner adds that “[i]mplementation of Dalcher’s stack walk within Shukla’s sandbox would be superfluous because Shukla’s sandbox will ultimately allow execution and apply its own rule set to allow or ‘block potential adverse effects’—regardless of any information returned by the alleged addition of Dalcher’s stack walk.” Id. at 38–39 (quoting Ex. 1004 ¶ 34 (emphasis by Patent Owner), citing Ex. 2001 ¶¶ 103, 105). Both parties support their respective positions with testimony by the respective experts. The preliminary record before us presents insufficient basis to discount the testimony of either expert, and the record would benefit from cross-examination of those declarants. Mindful of the standard we apply at this stage, we determine that Petitioner makes a sufficient showing with respect to the “executing stack walk processing” limitation.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art would not have been motivated to effect the combination of teachings that Petitioner proposes because Shukla “teaches away from ‘preventing execution of a payload’ ‘when an alert of suspicious behavior is triggered.’” Prelim. Resp. 48–49. This is so, Patent Owner says, because Shukla’s sandbox, “rather than interfere with the execution of the application, ‘detect[s] and block[s] potential adverse effects resulting from an attack or malware, but does not interfere with the normal execution of the valid application 1 and allows it to function as intended.’” Id. at 49 (quoting Ex. 1004 ¶ 34) (alterations by Patent Owner). But Shukla’s statements do not appear to make criticisms that would rise to the level of a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art reference does not teach away from the claimed subject matter unless the prior-art reference also criticizes, discredits, or otherwise discourages the solution claimed). Patent Owner will have an opportunity during the trial to revisit and elaborate on this argument. For the reasons set forth above, we conclude that Petitioner” slip op. at 36
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,284,591 - Nike, Inc. v. Valmarc CorporationInstitutedPTAB · Apr 18, 2023 · IPR2022-01404 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–34 on all petitioned grounds, finding a reasonable likelihood that Nike would prove at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never compelled, to institute an [inter partes review] proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating the exercise of discretion to deny institution under § 325(d), the Board uses the following two-part framework: (1) determining 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 the first part of the framework is satisfied, determining 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 Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, 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.” Upon consideration of the Petition and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–34 of the ’736 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical industry experience working with coded symbologies and networked data systems.” Pet. 13 (citing Ex. 1007 ¶ 51). Petitioner also argues that “[a]n increase in experience could compensate for less education, and vice-versa.” Id. (citing Ex. 1007 ¶ 51). Patent Owner “reserves the right to dispute” Petitioner’s proposed level of ordinary skill, but argues that Petitioner’s arguments fail under its proposal. Prelim. Resp. 16 (citing Pet. 13). Patent Owner also states that it “believes that the definition of a [person of ordinary skill in the art] is not material to the outcome of this Petition.” Id. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Turning to the Specification, Patent Owner refers to a portion of the Specification that indicates that holographs may be “in the form of a self-adhesive decal” and are not effective because they can be counterfeited. Ex. 1004, 2:9–18. Another cited portion states that an object of the ’736 patent is to provide “a specially designed authenticator to be carried by an article.” Id. at 3:11–12. Other cited portions describe that “the Brand ‘source’ authenticator is a relatively thin, circular disk” (Ex. 1004, 4:18–21), and that authenticator blank 52 can be “of predetermined configuration, size and thickness” (id. at 5:59–60) and “is preferably fabricated from good quality steel or other metal, or combinations or compounds of metal” (id. at 5:67–6:2) (emphasis added). The ’736 patent states that “[c]eramics, glass, plastics and other materials, natural and/or synthetic, suitable to accept direct part markings of encoded symbology 58, may just as well be utilized for authenticator blanks 52.” Id. at 6:5–8. Patent Owner also refers to portions that state “[g]enerally encoded symbols, such as symbol 58, are so applied to a carrier strip such as a pressure sensitive label which could then be applied to authenticator 50” but “[i]t is preferable for the instant invention to apply symbology 58 by direct authenticator 50 “may just as well have its encoded symbology 58 applied onto a substrate and the substrate affixed to surface 54 of authenticator 50”), 10:43–46 (stating that “[w]hile symbology 58 is preferably direct part marked onto or into its surface 56 it may also be first applied to a substrate which is thereafter secured to surface 56 of authenticator blank 52”). As shown above, the Specification indicates that an “authenticator”” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,063,736 - Nike, Inc. v. Valmarc CorporationInstitutedPTAB · Apr 18, 2023 · IPR2022-01403 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–15 over all presented grounds, finding a reasonable likelihood that Nike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Ex. 1001, code (56). None of Kirillina, DataMax, Moore-073, Berzack, Hudson, and Moore-778, the references relied on by Petitioner, are listed on the face of the patent. See id. The Office did not consider previously any of Petitioner’s asserted prior art or the grounds raised in the Petition. Ex. 1001, code (56); Ex. 1002, 63–76 (Office action mailed Dec. 4, 2009), 77 (Notice 2 US 2005/0273434 A1, published Dec. 8, 2005 (Ex. 2001). 3 US 6,533,180 B1, issued Mar. 18, 2003 (Ex. 2002). 4 US 5,521,815, issued May 28, 1996 (Ex. 2003). Disclosure Statement). Furthermore, Petitioner argues that the claims would have been obvious based on Kirillina, Moore-073, or Hudson. Pet. 21–58. The Examiner rejected the then pending independent claims as anticipated by Lubow. Ex. 1002, 63–76. Those independent claims were not rejected as being rendered obvious by any of Petitioner’s asserted prior art. See id. at 65–75 (rejecting claims 1, 2, and 5–10 as anticipated by Lubow and claims 3, 4, and 11–13 as unpatentable over Lubow). Even if Kirillina, Moore-073, and Hudson are each substantially similar to Lubow, Wood, or Rose, Patent Owner does not address whether DataMax and Berzack are cumulative to references that have been already considered by the Office. See Prelim. Resp. 15–20. Petitioner also argues obviousness based on combinations with DataMax and Berzack. Pet. 29–30 (arguing obviousness based on Kirillina and DataMax), 31–40 (arguing obviousness based on Moore-073 and Berzack). The challenges based on these combinations are not based on substantially the same art and cannot be based on substantially the same arguments as previously presented during prosecution. See Ex. 1002, 63–76. Moreover, Petitioner’s testimonial evidence was not before the Examiner during prosecution. Pet. 4. Thus, for the reasons above, the record does not persuade us that” slip op. at 8
- 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 [claim] it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, computer science or an equivalent field and two years of industry experience working with coded symbologies and networked data systems.” Pet. 14 (citing Ex. 1007 ¶ 51). Petitioner also argues that “[a]n increase in experience could compensate for less education, and vice-versa.” Id. (citing Ex. 1007 ¶ 51). Patent Owner “reserves the right to dispute” Petitioner’s proposed level of ordinary skill, but argues that Petitioner’s arguments fail under its proposal. Prelim. Resp. 21. Patent Owner also states that it “believes that outcome of this Petition.” Id. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“this stage, we agree with Patent Owner that the Specification defines “Brand” because it states: A Brand (or trademark, or service mark, as they are often referred to), as referred to herein, is any word, name, phrase, symbol, design or device or any combination of words, names, phrases, symbols, designs or devices which identifies and distinguishes the ‘source’ (such as the manufacturer, retailer, of another party. Ex. 1001, 1:30–36 (emphases added). The Specification supports that Brand “is used in its trademark sense,” as argued by Patent Owner. Prelim. Resp. 22. Prosecution history also supports Patent Owner. Ex. 1002, 54 (“A Brand is a trademark and a trademark to be considered to be a trademark must be used as a trademark.”). Patent Owner also points to a portion of the Specification that states “the authenticator carries an obviously observable Brand ‘source’ of the authenticator and authentication system” and “may also include a trademark of the Brand owner.” Prelim. Resp. 22; Ex. 1001, 3:24–32. This portion of the Specification supports Patent Owner’s position that “Brand” is unencoded and recognizable by a user to ensure accurate decoding by displaying the brand of the authentication system and to indicate the source to create good will. See Ex. 1001, 3:24–32. The Specification, however, does not appear to exclude “Brand” from being encoded yet still recognizable by a user. Ex. 1001, 1:30–36 (“[a] Brand . . . is any . . . symbol, design or device”), 3:24–42 (“an obviously observable Brand ‘source’ of the authenticator and authentication system”).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,852,195
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.