- Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01191 · APJ Arthur M Peslak · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Granted
“I. INTRODUCTION In these inter partes reviews, Google LLC and Microsoft Corporation (collectively “Petitioner”) challenge the patentability of claims 1–7 of U.S. Patent 10,789,393 B2 (Ex. 1001 (“’393 patent”)), which is owned by Carolyn W. Hafeman (“Patent Owner”). Petitioner requests that we consolidate these cases. IPR2022-01190, Paper 24 at 1. Patent Owner opposes. IPR2022-01190, Paper 28 at 1. Because these cases address the same claims, we grant Petitioner’s request to consolidate them pursuant to 37 C.F.R. § 42.122(a). See also 35 U.S.C. § 315(d) (giving Director discretion to consolidate proceedings).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus, precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Expert testimonyPatent owner expert discountedDecided for patent owner
“security by keeping ownership indicia constant after the initial set-up or configuration change.” PO Resp. 32 (citing Ex. 2040 ¶ 54(b)). Patent Owner cites the following testimony from Dr. Schaefer to support this assertion: Cohen discloses a method where the owner enters “a textual indicia of personal ownership” “during set-up or during a configuration change.” Cohen is specifically designed to keep ownership indicia constant. Although Cohen states that ownership indicia can be stored in RAM or nonvolatile memory, Cohen makes clear that nonvolatile memory is preferred because it cannot be altered, whereas ownership information stored in the RAM could be “easily defeated” by removing the battery. Thus, Cohen’s objective is to keep its local ownership indicia constant after an initial set-up or configuration change. Ex. 2040 ¶ 54(b) (citing Ex. 1006, 2:31–35, 4:50–5:4); see PO Resp. 29 (quoting this testimony), 32 (citing this testimony). We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Petitioner argues that certain language in each independent claim should be interpreted to require the automatic display of certain information “during or after every boot-up.” Pet. 9–11. Second, Petitioner argues that the return and recovery information recited in the claims is merely printed matter that is not entitled to patentable weight. Pet. 12. Patent Owner disagrees with Petitioner’s claim construction arguments. PO Resp. 9–21. For her part, Patent Owner argues that the terms “computer recovery information,” “recovery information,” and “return information” mean “information provided by the owner so that the device can be returned to the owner,” and she argues that “owner” means “the person or entity that owns, rents, or licenses the recovery application or program, and/or the person or entity who controls the recovery service.” PO Resp. 21 (citing Ex. 1001, 3:33–34, 4:4–5, 4:49–51, 11:11–13; Ex. 2035, 6–7, 19–20). As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
Patent outcomesUS 10,789,393 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,789,393 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01189 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds and granted consolidation.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,325,122 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,325,122 - Google LLC / Microsoft Corporation v. Carolyn W. HafemanAll claims unpatentablePTAB · Jan 23, 2024 · IPR2022-01188 · APJ Daniel J Galligan · IPR · Final written decision
Claims 1–7 are unpatentable as obvious over Jenne and Cohen; the Board did not reach the remaining grounds.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute this assessment or offer her own assessment. See PO Resp. To the extent necessary, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“As explained below, the combination of Jenne and Cohen teaches the content of the return/recovery information under Patent Owner’s construction, and, therefore, we need not resolve whether such information is entitled to patentable weight. Furthermore, as explained below, the combination of Jenne and Cohen teaches displaying the return/recovery information during or after every boot-up and teaches “owner” under Patent Owner’s construction. Therefore, because there are no claim construction disputes between the parties that affect the analysis of unpatentability based on the combination of Jenne and Cohen, we need not resolve these claim construction issues. 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 7
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
- Expert testimonyPatent owner expert discountedPetitioner expert creditedDecided for petitioner
“We do not credit Dr. Schaefer’s testimony because it is inconsistent with Cohen’s disclosure. In particular, Cohen discloses “storing of the personal ownership indicia and password data within nonvolatile memory, such as ROM 26,” which Cohen states “is preferably implemented utilizing so-called ‘flash’ ROM or serial EEPROM, which may be electrically altered upon application of suitable control signals.” Ex. 1006, 3:44–47, 4:47–50. Thus, contrary to Dr. Schaefer’s testimony that Cohen states a preference for nonvolatile memory because it cannot be altered, Cohen expressly discloses using nonvolatile memory that can be altered, so that the system may not “be easily defeated by opening the case of portable computer device 10 and temporarily removing the battery, rendering this information erased.” Ex. 1006, 4:54–57. In further contrast to Dr. Schaefer’s testimony, Dr. Zadok testifies that Jenne also discloses storing information in nonvolatile memory, such as nonvolatile random access memory (NVRAM) or a flash ROM. Ex 1003 ¶ 319 (citing Ex. 1005 ¶¶ 23, 27, Fig. 3). Dr. Zadok persuasively testifies that Cohen’s disclosure of storing information in nonvolatile memory is consistent with Jenne’s disclosure. Ex. 1003 ¶ 320. We find Petitioner’s reasoning to combine Jenne and Cohen to be persuasive. As Petitioner correctly points out (Pet. 19), Cohen expressly teaches that the benefits of displaying owner information with a password prompt when the computer is started are that “the likelihood that a lost or misplaced personal computer device will be returned to its owner [is] greatly enhanced and [that] ownership of otherwise fungible devices may be easily determined.” Ex. 1006, 5:52–58; see Ex. 1003 ¶ 301 (Dr. Zadok testifying that Cohen’s disclosure shows that a person of ordinary skill in the art would have been motivated to display owner information during boot-up). Thus, we find that Cohen’s express disclosure provides a rationale for a person of ordinary skill in the art to display a particular type of information, specifically owner information, in the system of Jenne. We agree with Petitioner that “the combination would have involved a simple substitution of a known generic element (Jenne’s ‘other information’) with a specific type of information (Cohen’s ‘ownership indicia’) to obtain predictable results.” Pet. 20 (citing KSR, 550 U.S. at 415–16).” slip op. at 14
Patent outcomesUS 10,325,122 unpatentableClaim construction§ 103 obviousnesscites KSRPatents in suitUS 10,325,122 - PTAB · Jan 3, 2024 · IPR2023-01142 · APJ Daniel J Galligan · IPR · Institution
The Board instituted review on all challenges to claims 1–29 and granted Micron’s motion to join IPR2023-00455 as a petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. 35 U.S.C. § 315(c).” slip op. at 2
NonePatents in suitUS 9,858,215 - PTAB · Jan 3, 2024 · IPR2023-01141 · APJ Daniel J Galligan · IPR · Institution
The Board instituted review of claims 1–15 on the asserted grounds and granted Micron’s motion to join IPR2023-00454 as a petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314. 35 U.S.C. § 315(c).” slip op. at 2
NonePatents in suitUS 11,093,417 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00928 · APJ Jason M Repko · IPR · Institution
The Board denied institution because the challenged claims were entitled to the 2010 priority date, making Morris not prior art and defeating the sole obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“written-description requirement. Pet. 74. We disagree for two principal reasons. First, the paragraph explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument is based on a narrow reading that is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 74. The nodes must communicate and cooperate because TCP has various” slip op. at 10
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)New argument disregardedDenied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 8, 2023 · IPR2023-00927 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art; the challenged claims were entitled to the February 27, 2010 priority date based on written-description support.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“The test for written description “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The specification must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed and “reasonably” convey to those skilled in the art “that the inventor had possession of the claimed subject matter as of the filing date.” Id. The “level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id.” slip op. at 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
- PTAB / AIA Trials › Other PTAB motions (exclude, strike, seal, additional discovery, rehearing)Denied
“4 In an email to the Board on September 25, 2023, Petitioner requested authorization to file a four-page reply to Patent Owner’s Preliminary Response to address whether the claims fall within an exception of Gentry Gallery. Ex. 3001. Petitioner’s request was denied. Id. It may always be the case that a Petitioner disagrees with how Patent Owner characterizes the facts and law presented in the Petition. Our rules, however, provide for a Petitioner’s Reply only when good cause exists. 37 C.F.R. § 42.108(c). Petitioner failed to show good cause because the issues that Petitioner identified in its request could have been, but were not, addressed in the petition. See id.” slip op. at 13
§ 103 obviousness§ 112 disclosurePatents in suitUS 10,986,217 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00925 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: claims 1 and 16 were entitled to the ’454 application’s priority date, so the obviousness challenge did not meet the institution threshold.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Written description adequateEntitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 70–71.” slip op. at 11
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not reached
“We disagree that the challenged claims are not entitled to February 27, 2010. Thus, Morris is not prior art, and Petitioner has not shown a reasonable likelihood of prevailing on any ground. Our analysis follows.” slip op. at 7
§ 103 obviousness§ 112 disclosurePatents in suitUS 11,050,855 - Google LLC v. Jenam Tech, LLCInstitution deniedPTAB · Dec 7, 2023 · IPR2023-00926 · APJ Jason M Repko · IPR · Institution
The Board denied institution because Morris was not prior art: the challenged claims were entitled to the ’454 application’s priority date, so the petition showed no reasonable likelihood of unpatentability.
RulingsInstitution decision- Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner
“We disagree for two principal reasons. First, the ’454 application explicitly describes a particular feature that is different from TCP: the ITP information may be in locations other than those specified by a particular version of TCP. Appl. ’454 ¶ 80. Second, Petitioner’s argument about the non-TCP features is based on a narrow reading of that limitation and is divorced from the rest of the specification describing the invention’s purpose and scope: communication and cooperation between nodes. See Pet. 64–65.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“To institute an inter partes review, we must determine “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, Petitioner has not shown a reasonable likelihood that it would prevail with respect to any claims challenged in the Petition. Thus, we deny institution of inter partes review.” slip op. at 2
§ 112 disclosurePatents in suitUS 11,050,855 - Samsung Electronics Co., Ltd. / Micron Technology, Inc. et al. v. Netlist, Inc.All claims unpatentablePTAB · Dec 6, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Final written decision
Claims 1–30 are unpatentable as obvious over Grounds 1–3; the Board did not reach Grounds 4–5 and dismissed Petitioner’s motion to exclude as moot.
RulingsFinal written decision- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“e) Conclusion on Motivation to Combine Harris and the FBDIMM Standards On this record, Petitioner has shown by a preponderance of the evidence that a person of ordinary skill in the art would have combined Harris and the FBDIMM standards since Harris states that its memory module may include fully buffered DIMMs (FBDs). Ex. 1023 ¶ 9. We agree that one of ordinary skill in the art would have recognized Harris’s mention of FBDIMMs as a standard and looked to the FBDIMM Standards for information concerning the voltage values standardized for use in an FBDIMM. Ex. 1027, 83; Ex. 1028, 9. For these reasons and others set forth above, we determine that one of ordinary skill in the art would have combined Harris and the FBDIMM Standards with a reasonable expectation of success.” slip op. at 41
- ExcludeMotion to exclude, deniedDenied
“H. Motion to Exclude Petitioner seeks to exclude materials referenced in three URLs submitted with Patent Owner’s Sur-Reply on August 4, 2023. Paper 33 (citing Paper 31, 1 n.2, 24, 26). Because we do not rely on any of these URLs in a manner adverse to Petitioner, we dismiss the Motion to Exclude as moot.” slip op. at 89
Patent outcomesUS 11,016,918 unpatentable§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 11,016,918
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.