- Netflix, Inc. v. Robocast, Inc.Institution deniedPTAB · May 11, 2023 · IPR2023-00081 · APJ David C Mckone · IPR · Institution
The Board denied institution because Netflix had not shown a reasonable likelihood of proving claims 1, 2, 37, or 38 unpatentable on any asserted ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“review. See 35 U.S.C. § 314 (2016); 37 C.F.R. § 42.4(a) (2019). 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 . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we decline to institute an inter partes review of the ’451 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“We do not see a substantial difference between the parties’ proposals. Although the proposals differ in certain respects, they do not differ in ways that affect our decision to deny institution of the proceeding. Both proposals include baccalaureate degrees and experience in generally related fields, with both parties indicating that additional education or experience could compensate for some lack in the other. For purposes of this Decision, we adopt Petitioner’s proposal, which we find consistent with the level of skill reflected by 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). However, our Decision would be the same under Patent Owner’s proposal.” slip op. at 10
- Prior constructionPrior construction adoptedDecided for patent owner
“we consider whether that construction was intended to encompass varying durations during the creating step or the displaying step. In its opinion, the Microsoft court observed that the defendants in that case argued that “before created,” and that “the ‘duration information’ is a parameter that the user can then interact with in order to vary the display of each resource.” Ex. 1014, 22. Patent Owner, the court continued, argued that “all that is required is for the user to maintain control over the actual presentation of the resource during the ‘displaying’ step, and that no duration information need be provided during the ‘creating a show structure of nodes’ step.” Id. at 22–23. The Microsoft court “agree[d] with [Patent Owner] that the user should be able to vary the duration of the content during show structure playback. This is the ‘interactive’ component of the claim.” Id. at 23; see also Prelim. Resp. 29 (arguing that this reasoning supports Patent Owner’s position that “the claim language expressly requires that the end user be able to ‘vary said duration’ for how long resource content currently ‘is being displayed’ to the user in ‘accordance with said show structure’ to which the resource belongs”). Here, the Microsoft court expressly states that the duration is varied during show structure playback, which is a clear reference to claim 1’s step of “displaying a content corresponding to each of said resources automatically in accordance with said show structure.” The Microsoft court “also finds that some duration information must be provided when the show structure of nodes is created,” that “‘parameter’ is a helpful concept for construction,” and that “the ‘duration information’ may be understood to be synonymous with a ‘parameter,’ as that timing information is the variable that will specify how long a particular content will be displayed.” Ex. 1014, 23. Thus, the Microsoft court construed claim 1 to require providing a variable duration parameter in the creating” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionOther
“As noted above, the Microsoft court construed “interactively variable duration information” to mean “a parameter specifying how long a content is to be displayed by default before a subsequent content is displayed, where the viewer of the content can change the parameter.” Ex. 1014, 22. The construction itself suggests that the duration information is varied during display, because it is in the context of resources being displayed sequentially and “the viewer of the content can change the parameter.” As to Escobar, Petitioner contends that “[w]hen playing decision lists/timelines in the authoring tool using Button 174 (invoking subroutine E), the user is the viewer of the content.” Pet. 49 (citing Ex. 1004, 6:40–45). Thus, Petitioner appears to contend that, during the process of creating a show structure, the creator is a viewer if the creator can view the edited content corresponding to a node as the show structure is being created. Here, Petitioner would satisfy the “viewer” aspect of the Microsoft court’s construction by pointing to a creator viewing a piece of the show structure during the creating step, although Escobar does not teach that the creator can vary the duration of content while viewing it or that durations can be varied while a show structure (as opposed to a node being created) is being displayed in the displaying step, as discussed in more detail below.” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,155,451 - 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 - 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 - PTAB · Apr 13, 2023 · IPR2022-01547 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood of success on at least claims 1, 2, and 4–7 over Loomis and Hodge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of cache memory technologies.” Pet. 10 (citing Ex. 1003 ¶ 427). Petitioner contends that a person of ordinary skill in the art “would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with experience with memory management technologies such as caching. Superior education or experience would compensate for deficiencies in either.” Id. at 10–11 (citing Ex. 1003 ¶ 42). Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’244 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. 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)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding.8 Pet. 11; Prelim. 8 During a conference call and as documented in a joint email thereafter, (1) Petitioner acknowledged an error in the Petition, where it states that four claim elements should be construed instead of stating that no terms require construction and (2) Patent Owner agreed that Petitioner’s clarification mooted an argument raised on page 13 of the Preliminary Response regarding the error in the Petition. See Ex. 3001 (Email from D. Smith dated Feb. 17, 2023). Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1154, 1068–69 (Fed. Cir. 2012)). slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,244 - PTAB · Apr 13, 2023 · IPR2022-01548 · APJ Nathan A Engels · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all petitioned grounds, finding a reasonable likelihood that TikTok would prevail on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in the Petition and any response thereto shows “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 the evidence of record, we determine Petitioner has demonstrated a reasonable likelihood of prevailing in establishing unpatentability of at least one claim of the ’041 patent. Accordingly, we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends a person of ordinary skill in the art at the time of the invention would have had “at least a [b]achelor’s degree in computer science, electrical engineering, computer engineering, or a related field, with 2–3 years of experience in digital video processing, or a related field, or equivalent research or professional experience.” Pet. 7 (citing Ex. 1003 ¶ 26). Patent Owner states that it applies Petitioner’s proposed level of ordinary skill for the purposes of its Preliminary Response. Prelim. Resp. 7.” slip op. at 6
- Expert testimonyPetitioner expert creditedDecided for petitioner
“Resp. 34–35. First, Mr. Lett’s Declaration constitutes evidence cited to and relied on in the Petition. Thus, to the extent there is repetition, it is more reasonable to infer that the Petition repeats Mr. Lett’s testimony (not the other way around). Second, that a petition repeats the analysis of an expert declarant is not a reason, in and of itself, to give that expert’s opinion little to no weight. Rather, the critical inquiries are whether the declaration testimony “is conclusory and unsupported” and whether it “disclose[s] the underlying facts or data on which the opinion is based.” Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 at 15 (PTAB Aug. 24, 2022) (precedential) (quoting 37 C.F.R. § 42.65(a)). Additionally, a similar important inquiry is whether the declaration testimony supports the arguments made in the Petition. If these conditions are satisfied, we do not give little to no weight to declaration testimony simply because it is repeated in a petition, just as we do not give little to no weight to teachings of the prior art that are repeated in a petition. For the purposes of this Decision, we apply Petitioner’s level of” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“At this stage, we determine it is unnecessary to determine whether the challenged claims are limited as argued by Patent Owner because, as explained below, we determine Petitioner has shown that both Morikawa and Suzuki teach or reasonably suggest each limitation of the challenged independent claims even under Patent Owner’s proposed requirement of a variable output frame rate. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (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 any extent that the parties disagree regarding this issue or the scope of the challenged claims, including whether prosecution history disclaimer applies and/or whether the claims are otherwise limited to variable output frame rates, the parties are encouraged to address such issues more directly in future briefing. We note for a statement made during prosecution to qualify as a disavowal of claim scope, the statement “must be ‘so clear as to show reasonable clarity and deliberateness,’ and ‘so unmistakable as to be unambiguous evidence of disclaimer.’” Genuine Enabling Tech. LLC v. Nintendo Co., 29 F.4th 1365, 1374 (Fed. Cir. 2022) (quoting Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1325 (Fed. Cir. 2003)). “The party seeking to invoke prosecution history disclaimer bears the burden of proving the existence of a clear and unmistakable disclaimer that would have been evident to one skilled in the art.” Id. (quoting Mass. Inst. of Tech. v. Shire Pharms., Inc., 839 F.3d 1111, 1119 (Fed. Cir. 2016)).” slip op. at 8
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 9,445,041 - PTAB · Apr 12, 2023 · IPR2022-01428 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR of claims 1–34 on all grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. 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.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained below in section II.E.3.a, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing under the district court’s construction and also under that construction as interpreted by Patent Owner. Because the constructions advocated by Patent Owner do not impact the decision whether to institute, we need not resolve this claim construction issue at this time. 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))). 2. “Chip Select Signals,” ”Chip Select Conduits” Claims 6, 11–14, 16–19, and 29–34 recite “chip select signals” or “chip select conduits.” Patent Owner argues that the district court construed the term “chip select signals” and associated “chip select conduits” to “exclude[] situations in which a chip select signal could enable multiple array dies at once” and contends that we should adopt this construction. Prelim. Resp. 23–24 (citing Ex. 2004, 33–34). For the reasons explained below in section II.E.6, we determine that Petitioner has demonstrated a and, therefore, we need not further address this claim construction at this time.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 20 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,787,060 - PTAB · Apr 12, 2023 · IPR2022-01427 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 over all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: Samsung stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 9,318,160 on the grounds presented in Samsung’s petition in IPR2022-01427, Samsung will not pursue an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Ex. 1051. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Pet. 23. Patent Owner argues that we should apply the district court’s constructions for “array die” and “chip select signals.” Prelim. Resp. 21–25. We provide a preliminary analysis of each of these terms below. The parties may address these and any other claim construction issues during the trial, and our final decision including any claim constructions will be based on the full record developed during the trial. 1. “Array Die” The district court construed “array die” as “array die that is different from a DRAM circuit” based on an argument during prosecution of the ’060 DRAM circuits 206A–D in U.S. Patent Application Publication 2008/0025137 A1 (Ex. 1011 (“Rajan137”)). Ex. 2004, 31–32 (citing January 13, 2014 Amendment at 10); see Ex. 1002 (’060 prosecution history), 465 (January 13, 2014 Amendment at 10) (“Rajan does not disclose ‘a plurality of stacked array dies.’ Rajan merely stacks DRAM circuits 206A–D, which are different from array dies.”). Patent Owner argues that we should adopt the district court’s construction so that there is a “consistent construction” between the two proceedings. Prelim. Resp. 23–24. Patent Owner, however, qualifies its position by arguing that “the statements it made during prosecution were specific to Rajan137’s DRAM circuits 206A–D and this should be made clear to the jury through the order instead of having the expert explain it at trial.” Prelim. Resp. 24 n.4 (citing Ex. 2005 (Patent Owner’s objections to the district court claim construction order), 1–2); see Ex. 2005, 2 (“[T]he Court should make clear that the claimed array die is one that is ‘different from Rajan’s DRAM circuits 206A–D.’”). Although Patent Owner appears to walk this qualification back by arguing in its Sur-reply that it withdrew its objections to the district court claim construction (Sur-reply 1–2 (citing Exs. 2010, 2011)), Patent Owner’s position here still appears to be that the term “array die” is one that is different from DRAM circuits 206A–D of Rajan137. For example, in disputing Petitioner’s unpatentability contentions, Patent Owner argues that “the Petition contains no analysis on how or why Kim’s or Riho’s memory dies are different from Rajan137’s DRAM circuits.” Prelim. Resp. 26–27; see also Prelim. Resp. 27 (“Missing from the Petition is any analysis on why the referenced DRAM dies in Grounds 1 and 2 differ from Rajan137’s” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 5 (citing Ex. 1003 ¶ 60). Petitioner also asserts that “[a]dditional training can substitute for educational or research experience, and vice versa,” and Petitioner identifies particular technology with which a person of ordinary skill in the art would 7 At this stage, Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Council) industry standards and DRAM (dynamic random access memory) and SDRAM (synchronous DRAM) memory modules. Pet. 5. Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Pet. 98–99 (citing Ex. 1016 ¶¶ 40, 45–46; Ex. 1030, 135–36; Ex. 1038, 68; Ex. 1003 ¶¶ 589–606). Petitioner argues that Riho teaches that varying impedances between TSVs that result from, for example, manufacturing processes and chip placement, should be taken into account. Pet. 99–100 (citing Ex. 1016 ¶¶ 55–56, 61); see Ex. 1016 ¶ 61 (discussing that the chip located closest to the control chip has “smaller penetrating through resistance” than a chip farther from the control chip). Petitioner contends that a person of ordinary skill “would have been motivated by Riho2 to account for these variations by selectively activating one or more drivers . . . to achieve the optimal driving strength for each ‘data conduit,’ thus saving power.” Pet. 100 (citing Ex. 1018 ¶¶ 96–97, Fig. 7A; Ex. 1017, 1:22–24, 5:11–14, Fig. 5; Ex. 1003 ¶¶ 598–603); see also Pet. 100–01 (asserting that “[o]ther contemporaneous references confirm that adjusting the driver strength to account for the position of a die in stack was well known at the time” (citing Ex. 1039, code (57), 7:46–49, Fig. 6)). 3. Patent Owner’s Arguments and Our Preliminary Analysis Patent Owner makes two arguments against Petitioner’s challenge to” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,318,160 - PTAB · Mar 17, 2023 · IPR2023-00205 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on all petitioned challenges and granted Micron’s motion to join IPR2022-00711 as a petitioner.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The patentability challenges in the 711 IPR met the “reasonable likelihood” standard of § 314(a). 711 IPR, Paper 14 at 34. Petitioner represents that the Petition “is substantively identical to” the petition in the 711 IPR. Motion 1. Petitioner presents the following grounds in this Petition, which are identical to the instituted grounds in the 711 IPR:” slip op. at 3
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00711 (“711 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 711 IPR, Papers 1, 14. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 3) and a Motion for Joinder (Paper 2) seeking to be joined as a petitioner in the 711 IPR. Petitioner represents that Samsung, the petitioner in the 711 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion. 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.” slip op. at 2
NonePatents in suitUS 10,860,506 - PTAB · Mar 13, 2023 · IPR2022-01303 · APJ Bart A Gerstenblith · IPR · Institution
Instituted review of claims 2, 4–7, 9, 11–13, 45–48, 50, and 54–59 on all grounds; the Board found a reasonable likelihood that claim 54 was obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“5. Weighing the Graham Factors “Once all relevant facts are found, the ultimate legal determination [of obviousness] involves the weighing of the fact findings to conclude whether the claimed combination would have been obvious to an ordinary artisan.” Arctic Cat, 876 F.3d at 1361. On balance, considering the record presently before us, which includes Petitioner’s strong showing regarding claim 54 and Patent Owner’s weaker evidence of nonobviousness, we determine that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Gottschalk and Kramer would have rendered the subject matter of claim 54 of the ’068 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Additionally, the Director recently clarified the Interim Procedure, stating that “[t]he Board should first assess Fintiv factors 1–5; if that analysis supports discretionary denial, the Board should engage the compelling merits question.” CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper 23 at 6 (PTAB Feb. 27, 2023) (precedential). Here, we determine that, on balance, Fintiv factors 1–5 do not favor exercising our discretion to deny institution and, therefore, there is no need to determine whether the Petition establishes compelling merits. 7. Conclusion on Fintiv Factors Upon consideration of the Fintiv factors, we determine not to exercise our discretion to deny institution.” slip op. at 19
- Parallel petitionsDenied
“sufficiently address the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “B” and the Petition in IPR2022-01302 as “A.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 2–3. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention would have had “a bachelor’s degree in computer science, or an equivalent field, and three to five years of experience working with computer implemented tracking systems. Additional education might compensate for less experience and vice-versa.” Pet. 25 (citing Ex. 1005 ¶ 48). Patent Owner states that “[f]or purposes of responding to [Petitioner’s] Petition for [inter partes review], Patent Owner accepts [Petitioner’s] proposed person of ordinary skill in the art.” Prelim. Resp. 6. Patent Owner further states, “[h]owever, for any other purpose, Patent Owner disagrees with [Petitioner] at least that such [person of ordinary skill in the art] would be limited to a maximum of five years of experience.” Id. And, Patent Owner further “reserves the right to offer an alternative definition based on expert evidence in the event the Petition is instituted.” Id. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’068 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 9
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068 - PTAB · Mar 13, 2023 · IPR2022-01302 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted review of claims 1, 14–20, 23–33, 35, and 41–44 on all petition grounds, finding a reasonable likelihood claim 1 is obvious over Gottschalk and Kramer.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons below, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Memo states that it may be useful to compare a trial date with evidence of a median time to trial. Director’s Memo 8. The purpose of doing so is to ascertain the likelihood of the scheduled trial date actually occurring on or around that date. Id. at 8 (“Stakeholders correctly noted that scheduled trial dates are unreliable and often change[,]” and a “scheduled trial date . . . is not by itself a good indicator of [when] the district court trial will occur.”). The Director’s Memo does not state that median time-to-trial statistics are themselves a trial date, or otherwise replace consideration of a trial date under Fintiv factor 2. And, in the circumstances here, where the case was transferred from the Western District of Texas, the usefulness of the median time to trial statistics is less clear. Ultimately, though, we will not speculate on when a trial may be scheduled. Accordingly, factor 2 favors not exercising our discretion to deny institution.” slip op. at 18
- Parallel petitionsDecided for petitioner
“sufficiently address all the challenged claims” of the ’068 patent. Notice 1. According to Petitioner, Gentex asserted a large number of claims in the parallel litigation “that are distinct from one another, that collectively comprise several thousand words of claim language.” Id. Petitioner ranks this Petition as “A” and the Petition in IPR2022-01303 as “B.” Id. at 1–2. Petitioner also explains its reasoning for the grouping of the claims challenged in each petition and that the only overlap between the two petitions is claim 1, from which a large number of claims depend. Id. at 3–4. Patent Owner did not file a response to the Notice. Nor did Patent Owner otherwise dispute Petitioner’s contentions that two petitions are necessary. See generally Prelim. Resp. On the present record, we see no reason to exercise our discretion to deny institution of either petition on the basis of Petitioner filing two petitions to address the large number of claims asserted in the related litigation. See PTAB Consolidated Trial Practice Guide, 59 (Nov. 2019)10 (recognizing that one circumstance in which more than one petition may be necessary is when a patent owner asserts a large number of claims in related litigation).” slip op. at 21
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for patent owner
“In this case, claim 1 recites mounting “a sourceless orientation tracker on a user’s head.” Ex. 1001, 15:5–6. There is no further reference to “sourceless orientation tracker” in claim 1. Id. Claim 11 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises an inertial sensor”; claim 12 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises a tilt-sensor”; and claim 13 recites “[t]he method of claim 1 in which the sourceless orientation tracker comprises a magnetic compass sensor.” Id. at 15:35–40. The parties have not identified and we do not discern anything in the language of the claims that suggests we should deviate from the plain and ordinary meaning of “sourceless orientation tracker.” We now turn to the Specification of the ’068 patent. The Specification states that “[v]irtual reality (VR) systems require tracking of the orientation and position of a user’s head and hands with respect to a world coordinate frame.” Ex. 1001, 1:11–13. The Specification also describes “a variety of mechanical, acoustic, magnetic, and optical systems” used for such tracking and states that “[t]hese systems require propagation of a signal between a fixed ‘source’ and the tracked ‘sensor,’” which “limit[s] the range of operation.” Id. at 1:15–20. The Specification describes that “‘[s]ourceless’ orientation trackers have been developed based on geomagnetic and/or inertial sensors.” Id. at 1:26–27. And, the Specification explains that “the invention features a sourceless orientation tracker including an inertial sensor, a tilt-sensor, or a magnetic compass sensor.” Id. at 2:6–8.” slip op. at 14
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 6,757,068
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.