- Microsoft Corporation / HP Inc. et al. v. Litl LLCInstitution deniedPTAB · Jul 1, 2024 · IPR2024-00455 · APJ Frederick C Laney · IPR · Institution
The Board denied institution on all challenged claims and grounds because Petitioners did not show a reasonable likelihood that Reavey and Chandhri disclose or suggest limitation 1[h].
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. And as a result, we find Petitioners have not demonstrated a reasonable likelihood of proving that the Reavey/Chandhri combination render independent claims 1 and 28 unpatentable, which is a deficiency that necessarily extends therethrough to all of the dependent claims challenged in all three grounds.” slip op. at 23
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioners assert, with the support of its expert, that a person of ordinary skill in the art at the relevant time would have had a “bachelor’s degree in electrical engineering, computer engineering, computer science, or a similar field, plus two years of work experience in designing GUIs for computing devices.” Pet. 11 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute or address this characterization of the skill level of an artisan in the relevant field. See generally Prelim. Resp. On this record, Petitioners’ proposed level of ordinary skill in the art is not disputed and is consistent with our review and understanding of the technology and descriptions in the ’315 patent and the asserted prior art references. Okajima, 261 F.3d at 1355. For purposes of this Decision, therefore, we rely on Petitioners’ proposed level of ordinary skill in the art to focus the lens through which we view the prior art and the claimed invention.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“The Petition offers explicit claim constructions for a number of claim terms, including “plurality of views,” “display component,” “execution component,” “storage component,” and “first/second user interface component.” Pet. 12–16. And Patent Owner states that it “does not challenge Petitioners’ explicit claim constructions because the Petition fails even if these constructions are adopted.” Prelim. Resp. 18. Nevertheless, we do not reach Petitioners’ proposed constructions because a resolution in this matter does not turn on the precise meaning of any of those terms; in fact, none of the proposed constructions are for terms that are used in Limitation [1h]. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). For the language used in Limitation [1h], which is critical to our decision, both parties rely on the plain and ordinary meaning and neither party suggests that any term used has a particular meaning beyond what is clearly conveyed within the context of the ’315 patent. Therefore, no term in this proceeding needs to be construed expressly.” slip op. at 12
- BurdenDecided for patent owner
“view of the evidence of record, we are not persuaded Petitioners have shown with sufficient particularity why the combined teachings of Reavey and Chandhri disclose or suggest the recited elements of Limitation [1h]. For our purposes here, we accept Petitioners’ contention that, in light of the Reavey and Chandhri disclosures, a skilled artisan would have been led to configure Reavey’s device to display in laptop mode a first set of visual representations using a menu-based view and transition when in flat mode to an image-based scrolling view to display a second set of visual representations. Still, we remain unpersuaded Petitioners have established sufficiently that the Reavey and Chandhri combination discloses or suggests to a skilled artisan a configuration in which the device filters the first set of visual representations by identifying and removing content therefrom to be used with the image-based scrolling view to generate a second set of visual representations that are based on the filtered version of the first set of visual representations.” slip op. at 19
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,003,315 - PTAB · Jun 10, 2024 · IPR2024-00404 · APJ Garth D Baer · IPR · Institution
Instituted inter partes review of claims 1, 3, 4, 7–10, 13, 14, 16–18, and 22 on all asserted obviousness grounds.
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. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“In evaluating arguments under § 325(d), we use a two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“1. “frame mode” Petitioner proposes we construe “frame mode” the same as we did in IPR2021-00822 as “having the keyboard face down on a surface with the screen face up, and the base and display components forming a non-zero angle.” Pet. 8–9. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“2. “content mode” Petitioner proposes we construe “content mode” consistent with Patent Owner’s construction during the ’844 Reexam, where Patent Owner “argued for and received a construction of [‘Content Mode’] as meaning ‘displaying some information that represents a higher-level construct into which content is grouped.’” Id. at 9 (citing Ex. 1005, 6). Further, “[t]his recitation is distinct from merely displaying individual things (e.g., applications) that may be grouped into a content mode.” Id. Patent Owner does not dispute Petitioner’s construction in its Preliminary Response. On the current record, we agree with and adopt Petitioner’s proposed construction.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,624,844 - PTAB · May 31, 2024 · IPR2024-00255 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 1–4 and 6–11 on both asserted obviousness grounds, finding a reasonable likelihood that Petitioner would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“that, because judgments have been entered in the district court actions, there is finality as that relates to Fintiv issues. In a similar instance, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished a Fintiv analysis under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, Inc., Paper 14 at 3. Further, the Director determined that, “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.9” slip op. at 12
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we institute an inter partes review of the challenged claims on the grounds set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“of ordinary skill in the art. Pet. 7 n.2 (citing Ex. 1003 ¶¶ 8, 10, 26). Dr. Sundaresan testifies that a person having ordinary skill in the art “had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with . . . navigation and/or geolocation systems,” and “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. For the purposes of its Preliminary Response, Patent Owner does not dispute Petitioner’s definition of the level of ordinary skill in the art. Prelim. Resp. 32. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’104 patent and the prior art. See” slip op. at 7
- Prior constructionPrior construction adoptedDecided for petitioner
“For purposes of this Decision, we adopt the district court’s construction of “grid point” as “a point associated with representative calibration data for an area.” See Ex. 1054, 18–20. This construction is consistent with the claim language and the specification of the ’104 patent and is further supported by the reasoning provided by the district court’s claim construction order. See id. We do not discern a need to construe explicitly any other claim language at this juncture because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 7,561,104 - Dell Technologies Inc. / Dell Inc. et al. v. Litl LLCInstitution deniedPTAB · May 28, 2024 · IPR2024-00480 · APJ Brian D Range · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that claims 1–11, 19–21, and 23–25 were obvious over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Under 35 U.S.C. § 314(a), 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.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has not shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Accordingly, we do not institute an inter partes review on the grounds set forth in the Petition. See 37 C.F.R. § 42.108(a).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art (POSITA) would have had (i) a bachelor’s degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and two to three years of experience in the design and architecture of laptop computers and other portable electronic devices, or (ii) an advanced degree (or equivalent) in electrical engineering, computer engineering, computer science, or a comparable subject and one year of post-graduate research or work experience in the field. Ex. 1003, ¶102. A POSITA would have been familiar with the structural hardware aspects of laptop computers and other portable electronic devices as well as designs of user interfaces employed and displayed by computer operating systems and their organization of content and functionality. Id. Pet. 9–10. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 17. For this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the level of skill reflected in both the prior art and the ’229 patent. 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 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For this decision, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analysis below and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 12
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“Lane’s accelerometer provides information only on the “spatial orientation” of the first module (keyboard) or second module (screen). Ex. 1005, 5:23–6:6. “Spatial orientation,” as used in Lane, refers to the orientation of the first or second module relative to the earth’s gravity because Lane teaches that its accelerometer uses a “movable conductor” that “responds via gravitational forces” to reorientation. Id. at 5:25–31. Lane does not teach using an accelerometer to determine the orientation of the first and second modules relative to each other, and Petitioner does not suggest that Lane could be modified to determine the orientation of the first and second modules relative to each other. Rather, Petitioner argues that, for example, a determination that the keyboard is “facing upward but at a diagonal angle” (relative to the earth’s gravity) would be indicative of “easel mode.” Pet. 30. The spatial orientation of Lane’s keyboard or screen relative to the earth’s gravity, however, does not reliably9 indicate the device’s current display mode because, at any given moment, the Lane device could be held at different angles such that orientation relative to gravity does not correlate with the display mode. For example, Lane Figure 13 teaches that its keyboard could be at an angle (relative to earth’s gravity) while in laptop mode. Ex. 1005, Fig. 5; Prelim. Resp. 41–42. We reproduce Lane Figure 13 as annotated by Patent Owner below.” slip op. at 18
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,563,229 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitution deniedPTAB · May 13, 2024 · IPR2024-00167 · APJ Jeffrey W Abraham · IPR · Institution
The Board denied institution because Petitioner failed to show a reasonable likelihood that any challenged claim was unpatentable over the asserted anticipation and obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Upon consideration of the Petition, the Preliminary Response, and the evidence presented, we determine that Petitioner has not demonstrated a reasonable likelihood that it will prevail in showing that at least one of the challenged claims is unpatentable. Accordingly, we do not institute an inter partes review of any challenged claim based on any ground asserted in the Petition. IV. ORDER For the reasons given, it is: ORDERED that, pursuant to 35 U.S.C. § 314, the Petition is denied, and no inter partes review is instituted.” slip op. at 22
- BurdenDecided for patent owner
“For all of the foregoing reasons, Petitioner has failed to demonstrate sufficiently that Okabe discloses a semiconductor integrated circuit package with a first layer that includes “a first ground plane enabling electrical connection with low speed electronic circuitry” and a “second ground plane enabling electrical connection with high speed electronic circuitry.” Ex. 1001, 9:25–36.” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art would have had a “bachelor’s degree in a field relating to the integrated circuit package manufacturing process like materials science, physics, electrical engineering, or other related subjects, and at least two to three years of experience with fabrication and packaging of integrated circuits.” Pet. 4 (citing Ex. 1002 Preliminary Response. Prelim. Resp. 7. In light of the record before us, and for purposes of this Decision, we adopt Petitioner’s proposal regarding the level of ordinary skill in the art.” slip op. at 7
- Expert testimonyPetitioner expert discountedDecided for patent owner
“Petitioner’s arguments are not persuasive. As Patent Owner and Dr. Bernstein point out, Petitioner does not specify the frequencies at which duplexer 45 and VCO 70 operate in Okabe. Prelim. Resp. 20; Ex. 2001 ¶ 79. Nor does Petitioner direct us to any criteria for classifying circuitry as “high speed” or “low speed.” Prelim. Resp. 20; Ex. 2001 ¶ 79. As a result, we are left with only the assertion of what a person of ordinary skill in the art would have understood about duplexer 45 and VCO 70. To support this assertion, Petitioner directs us to statements in Dr. Baker’s declaration that mirror the Petition. Pet. 26–27 (citing Ex. 1002 ¶¶ 71–73). Dr. Baker, however, does not cite to any supporting evidence or provide any technical reasoning to support his statements. Ex. 1002 ¶¶ 71–73. “Thus, the cited declaration testimony is conclusory and unsupported, adds little to the conclusory assertion for which it is offered to support, and is entitled to little weight.” Xerox Corp. v. Bytemark Inc., IPR2022-00624, Paper 9 at 15 (August 24, 2022) (precedential); see also 37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). Accordingly, Petitioner has failed to demonstrate sufficiently that Okabe discloses a second layer that includes a “third ground plane configured for electrical connection with low speed electronic circuitry” and a “fourth ground plane configured for electrical connection with high speed electronic circuitry.” Ex. 1001, 9:37– 43.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,646,091 - PTAB · May 10, 2024 · IPR2024-00259 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted inter partes review of claims 1, 7, 9, 32, 38, and 40 on the asserted obviousness ground over Bhattacharya and Yost.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“that because judgements have been entered in the district court actions, this suggests finality. In a similar instance in Volvo, where a district court’s § 101 determination was appealed to the Federal Circuit, the Director determined that the Board had the authority to institute an inter partes review and a Fintiv analysis should be performed. See Volvo Penta of the Americas, LLC v. Brunswick Corp., IPR2022-01366, Paper 15 at 1–8 (PTAB May 2, 2023). The Director has additionally distinguished the Fintiv analysis in AviaGames under similar circumstances to those here, where “the district court’s judgment of invalidity under 35 U.S.C. § 101, i.e., a statutory ground that could not have been raised before the Board, does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.” AviaGames, IPR2022- 00530, Paper 14 at 3 (PTAB Mar. 2, 2023) (Decision on Director Review). Further, the Director determined that “the challenged claims have not yet been cancelled and remain in force until the opportunity to appeal has been exhausted,” noting that “[b]y the time an appeal will have concluded, Petitioner will be barred under 35 U.S.C. § 315(b) from bringing a new challenge in an IPR petition.” Id. at 3–4. Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal duplicate the obviousness issues addressed here. The timing of the progress of the appeal and any potential remand to the district court is uncertain. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“viii. Conclusion Accordingly, we are persuaded that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing that claim 1 is rendered obvious by Bhattacharya and Yost.” slip op. at 32
- Skill levelSkill level petitioner adoptedOther
“IV. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have had at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. Pet. 6–7 (citing Ex. 1003 ¶ 8). Petitioner also contends that additional education could compensate for less work experience and vice versa. Id. at 7. For the purposes of the Preliminary Response, Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. Prelim. Resp. 26. For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 16
- Prior constructionPrior construction adoptedOther
“patent and district court issued claim constructions for some terms that were disputed. Ex. 1020; Ex. 1025. Petitioner uses the district court’s construction or the agreed-upon construction for the terms “calibration data,” “calibration points,” “grid point,” “network measurement report,” and the order of the “providing,” “generating,” “evaluating,” and “selecting” steps of claim 1. Pet. 7–9 (citing Ex. 1020; Ex. 1025). Petitioner proposes that all terms should be interpreted consistent with the Phillips standard. Id. at 7. Patent Owner “does not dispute Petitioner’s statement on claim construction for the purposes of this Preliminary Response” and “reserves the right to present arguments on the constructions should the Petition be instituted.” Prelim. Resp. 26. For the purposes of this Decision, we will use the district court’s claim constructions and those agreed-upon by the parties in the litigations, where the adoption of those constructions have been agreed to by the parties at this juncture in this proceeding. We determine that we need not expressly construe any other claim terms at this juncture. 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 17
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,406,753 - PTAB · May 10, 2024 · IPR2024-00032 · APJ Brian D Range · IPR · Institution
The Board instituted IPR on claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 on all asserted grounds.
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. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–5, 9, 11, 12, 14–16, 18–22, 25, 27, 29, 31, 32, and 35 of the ’494 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.” slip op. at 15
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“an IDS in the ’494 patent, we agree with Patent Owner that the record shows that Bhattacharya and Spain10 were listed on an IDS during prosecution of the parent ’358 patent, which the ’494 patent Examiner was required to consider. Prelim. Resp. 5 (citing MPEP 609.02). As such, we determine that Bhattacharya and Spain were presented previously to the Office. See Prelim. Resp. 9; Advanced Bionics at 7–8. We also agree with Patent Owner that the addition of Meunier does not substantially impact our § 325(d) analysis because of the Petition’s limited reliance on this reference. For these reasons, we determine that the first prong of Advanced Bionics is met and turn to the second prong.” slip op. at 23
- Skill levelSkill level petitioner adoptedOther
“would have at least a Bachelor’s degree in electrical engineering, computer science, or a similar discipline, and at least two years of experience in the field working with working with navigation and/or geolocation systems. 1003 ¶ 8; Pet. 6, n.2. According to Petitioner, “[s]uperior education could compensate for a deficiency in work experience, and vice-versa.” Ex. 1003 ¶ 8. Patent Owner does not dispute the level of ordinary skill in the art. Prelim Resp. 43. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’494 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 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,786,494 - PTAB · May 10, 2024 · IPR2024-00031 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR of claims 15–20, 24, 26, and 27 on all asserted grounds, finding a reasonable likelihood of success on anticipation and obviousness.
RulingsInstitution decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“time it was made, 35 U.S.C. § 103 requires us to resolve the level of ordinary skill in the pertinent art at the time of the invention. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). The person of ordinary skill in the art is a hypothetical person who is presumed to have known the relevant art at the time of the invention. In re GPAC, Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). Factors that may be considered in determining the level of ordinary skill in the art include, but are not limited to, the types of problems encountered in the art, the sophistication of the technology, and educational level of active workers in the field. Id. In a given case, one or more factors may predominate. Id.” slip op. at 6
- Prior constructionPrior construction adoptedDecided for petitioner
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction needed
“district-court-type standard, as described in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). See 37 C.F.R. § 42.100(b). Under that standard, we generally give claim terms their ordinary and customary meaning, as would be understood by a person of ordinary skill in the art at the time of the invention, in light of the language of the claims, the specification, and the prosecution history. See Phillips, 415 F.3d at 1313–14. Although extrinsic evidence, when available, may also be useful when construing claim terms under this standard, extrinsic evidence should be considered in the context of the intrinsic evidence. See id. at 1317–19.” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Fintiv states that “a district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts.” Fintiv at 6. In view of the circumstances, we do not discern that the § 101 issues addressed in the Federal Circuit appeal would duplicate the anticipation and obviousness issues addressed here. Accordingly, given the limited § 101 issues on appeal, we do not discern there are any concerns about duplication of efforts. Moreover, because of the uncertainty of the timing of any remand from the Federal Circuit to the district court to address any anticipation or obviousness issues, the present circumstances with a pending appeal effectively act as a stay on the assessment of invalidity issues.7” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites GrahamPatents in suitUS 8,400,358 - NXP USA, Inc. v. Bell Semiconductor, LLCInstitutedPTAB · May 8, 2024 · IPR2024-00168 · APJ Brian D Range · IPR · Institution
Instituted inter partes review of claims 1–6 and 8 on all petition grounds addressing those claims, based on a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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. For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim. We hereby institute an inter partes review as to claims 1–6 and 8 of the ’245 patent based upon Petitioner’s asserted grounds of unpatentability.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person of ordinary skill in the art “would have had a bachelor’s degree in a field relating to the semiconductor manufacturing process, such as materials science, physics, electrical engineering, and/or other related subjects, and at least two to three years of experience with fabrication of integrated circuits.” Pet. 4 (citing Ex. 1002 ¶ 20). Petitioner also contends “[m]ore education can supplement practical experience and vice versa.” Id. Patent Owner does not dispute the level of ordinary skill in the art. Prelim. Resp. 4–5. For purposes of this Decision, we adopt Petitioner’s proposal as reasonable and consistent with the ’245 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 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for patent owner
“Claim 1 affirmatively recites, for example, “a plurality of layers under the top layer.” Ex. 1001, 4:13. Claim 1 also affirmatively recites that the “plurality of layers compris[es] a bottom routing layer having signal traces thereon.” Id. at 4:14–15. So, claim 1 requires a bottom routing layer having signal traces. Claim 1 then recites “where[] none of the signal traces of the bottom routing layer are located over ball pads of the ball pad layer which are disposed in an area within two ball pad pitches of the corner of the die.” Id. at 4:17–20. This recitation serves to describe the “signal traces of the bottom routing layer.” The recitation does not affirmatively recite a required location of any ball pads. Likewise, the claim as a whole also does not state that the ball pad layer comprises ball pads disposed within two ball pad pitches of the corner of the die. Rather, the claim recites “said ball pad layer having a plurality of ball pads” without affirmatively indicating where those ball pads must be located within the ball pad layer. Thus, on the present record, we interpret claim 1’s recitation of “none of the signal traces . . . within two ball pad pitches of the corner of the die” as requiring that no signal traces of the bottom routing layer be located over ball pads of the ball pad layer disposed within two ball pad pitches of the corner of the die if any such ball pads exist in this location. We do not interpret claim 1 as affirmatively requiring ball pads disposed within two ball pad pitches of the corner of the die. To the extent Patent Owner maintains arguments regarding this recitation in a Patent Owner Response, we invite the parties to further address this claim construction issue at trial to the extent permitted by our rules.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“We have reviewed Petitioner’s contentions for all of the elements of independent claim 1, as well as the supporting evidence. Pet. 45–55. Based on the record before us, we are persuaded that Petitioner’s discussion of the particular structures and methods in Chung and Celeron establishes a reasonable likelihood of prevailing at trial on the issue of whether the combined teachings of Chung and Celeron teach or suggest all of the limitations of independent claim 1. Id. Also, based on the present record, we are persuaded that Petitioner adequately establishes that a person having ordinary skill in the art would have had reason to combine the teachings of Chung and Celeron.” slip op. at 24
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,345,245 - Infineon Technologies AG v. Amatech Group LimitedRehearing grantedPTAB · Apr 3, 2024 · IPR2022-00951 · APJ Stacey G White · IPR · Rehearing
On rehearing, the Board held claim 3 unpatentable as obvious over Eray-WO799, revising the final written decision’s outcome for that claim.
RulingsRehearing decision- RehearingRehearing, grantedGranted
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
- Skill levelSkill level petitioner adoptedOther
“As stated in our Final Written Decision, we adopted Petitioner’s definition of the person of ordinary skill in the art and found that the person of ordinary skill in the art would have possessed “a Bachelor’s degree in electrical engineering or a similar field, and 1–2 years of experience researching and developing antennas used in RFID applications.” Dec. 6–7 (citing Pet. 8; PO Resp. 18). Petitioner’s declarant, Dr. Daniel van der Weide, supported Petitioner’s definition, which was adopted for this proceeding. Ex. 1003 ¶ 25. Dr. van der Weide defined himself as “a person of more than ordinary skill in the art during the relevant timeframe” because “[b]y 2010, [he] held a Ph.D. in electrical engineering, and [he] had at least” slip op. at 4
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“unrebutted expert testimony corroborated by two prior art patents describing RFID smart cards” and that this evidence “demonstrated that a conventional and obvious way to manufacture Eray-WO799’s smart card was by forming a card antenna on a card body before adding the chip.” Req. Reh’g 2 (citing Pet. 39–40; Paper 20 (“Reply”) at 31). Thus, Petitioner argues a person of ordinary skill in the art would have understood that an obvious and conventional way of manufacturing the card body of Eray- WO799 would have had unconnected ends as required by our construction. Id. Paragraph 149 of Dr. van der Weide’s declaration states that a person of ordinary skill in the art “would have understood that an obvious and conventional way to construct the smart card as shown in Eray-WO799 FIG. 12 would have been to form the turns S1, S2, SC3 and SC4 on or in the card body (e.g., by laying wire) before connecting the wire to (or forming) access terminals and connecting module M.” Ex. 1003 ¶ 149. In support of that because it was “directed to solving problems that occur during the manufacture of cards.” Dec. 42 (citing Ex. 1028, 1:25–2:53). Petitioner points out that “[w]hile Ryu discloses manufacturing techniques, Ryu also describes and claims a ‘communication system’ with a smart card and a reader.” Reh’g Req. 9 (citing Ex. 1028, code (57), claims 1–2). Petitioner is correct in noting that Ryu’s disclosures are not so narrow as we described in the Decision. As to Finn-089, we found that reference unhelpful because it was “directed to a process for the contacting of a wire conductor in the course of manufacture of a transponder unit.” Dec. 41–42 (citing Ex. 1015, 1:15–17). Petitioner asserts that we failed to acknowledge to the fact that Finn-089 was incorporated by reference in the ’240 patent noting that “[p]atents incorporated by reference ‘are effectively part of the host [patents] as if [they] were explicitly contained therein.’” Reh’g Req. 9 (citing X2Y Attenuators, LLC v. U.S. Int’l Trade Comm’n, 757 F.3d 1358, 1362–63 (Fed. Cir. 2014) (alterations in Rehearing Request)). On this record, we agree that we overlooked and misapprehended the import of Ryu and Finn-089 and if those references are given appropriate weight, they lend further credence to Dr. van der Weide’s testimony that one of ordinary skill in the art would have known that an obvious way to manufacture Eray-WO799 would have created an intermediate product with requisite free ends. Further, we adopt the full reasoning stated in the Dissent as to the unpatentability of claim 3 (Dec. 53–57). Therefore, we GRANT Petitioner’s Request for Rehearing slip op. at 6
§ 103 obviousnessPatents in suitUS 9,165,240
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.