- PTAB · Nov 7, 2024 · IPR2024-00867 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR on claims 11, 12, 16, 17, 19, 20, and 84 on all petitioned grounds, finding a reasonable likelihood of success on the Nozaki-Haitani obviousness challenge.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Trademark Office issued an Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (“Guidance Memo”)3 to clarify “the [Board’s] current application of Fintiv to discretionary institutions where there is parallel litigation” and to “confirm[] that the precedential import of Fintiv is limited to the facts of that case.” Guidance Memo 2. In particular, the Memorandum states that the Board 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. Id. at 9 (emphasis added).” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“3. Discussion We disagree with Patent Owner’s assertion that “Nozaki was considered during . . . reexamination of the ’848 Patent.” Prelim. Resp 4 (citing Ex. 1004, 165–190). To support this assertion, Patent Owner cites to 25 pages of the ’848 reexamination file (see Prelim. Resp. 4 (citing Ex. 1004, 165–190), arguing that “the grounds presented by Petitioner are duplicative of the art and arguments considered by the Examiner during . . . reexamination of the ’848 patent” (Prelim. Resp. 6), and concluding that “many of Petitioner’s arguments are simply a rehash of the reexamination request that was thoroughly considered by the Office during reexamination” (id. at 12). Patent Owner, however, provides no specific examples, comparisons, or analysis between the evidence and arguments concerning Nozaki presented in the Petition with the evidence and arguments concerning Nozaki ostensibly considered during the ’848 patent reexamination. Indeed, the only mention of “Nozaki” we can discern in the 25 pages of the ’848 reexamination file cited by Patent Owner are two listings of “Nozaki” patents appearing on pages 171 and 186 of the reexamination file. ’108”); Nozaki U.S. Patent 8,538,252 (“Nozaki ’252”)). These two “Nozaki” patents, however, are not the same Nozaki reference asserted by the Petitioner as prior art in the Petition. See Pet. 5 (citing Ex. 1006, WO 2007/060980 (“Nozaki ’980”)). The Nozaki reference asserted by Petitioner in the Petition is titled, “Electronic Camera and Image Processing Device,” is directed to an “electronic camera compris[ing] an image sensor, an image processing section, a face detecting section, a controlling section, a face image creating section, or a face recognizing data creating section, and a recording section,” contains 19 figures and has 57 claims. See Ex. 1006, code (57) Abstr., ¶ 41, pgs. 52–60.” slip op. at 15
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner describes a person of ordinary skill in the art as a person having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, with at least two to three years of experience in the field of image processing.” Pet. 4 (citing Ex. 1005 ¶ 35). Petitioner further asserts that “[a]dditional education could substitute for professional experience, and significant experience in the field could substitute for formal Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 22. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’848 patent. This is supported by the testimony of Petitioner’s declarant, Dr. Bederson. See Ex. 1005 ¶ 35. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. D. Claim Construction” slip op. at 20
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Here, Petitioner contends that “all claim terms in the Challenged Claims should be construed according to their plain and ordinary meaning to a [person of ordinary skill in the art].” Pet. 5. Patent Owner states that “[g]iven the multiple reasons why the Petition should not be instituted, including 35 U.S.C. § 325(d) and 35 U.S.C. § 314, and to minimize the disputes that the Board needs to address at this preliminary stage, for the purposes of this Preliminary Response only, Patent Owner simply applies Petitioner’s own constructions to show how the Petitioner has not met its burden under 37 CFR § 42.104(b)(4).” Prelim. Resp. 25. For purposes of this Decision and based on this preliminary record, we determine that no claim term requires express construction at this stage of the proceeding. E. Patentability Challenges” slip op. at 22
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,176,848 - PTAB · Nov 7, 2024 · IPR2024-00717 · APJ Kevin C Trock · IPR · Institution
The Board instituted review of claims 1–11 on all four §103 grounds, finding a reasonable likelihood that Samsung would show at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“On September 12, 2024, with the Board’s authorization, Petitioner filed such a stipulation. Paper 8. Petitioner’s stipulation reads: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00717, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.. Id. Given that the language of Petitioner’s stipulation substantively tracks the stipulation language set out in the Guidance Memo, we decline to exercise discretion under 35 U.S.C. § 314(a) to deny institution. B.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“having “a Bachelors’ degree in electrical or computer engineering or a comparable field of study, plus approximately two to three years of professional experience with camera technology.” Pet. 5. Petitioner’s declarant, Mr. Guidash, provides supporting testimony as to the level of ordinary skill in the art. Ex. 1003 ¶¶ 27–30. Patent Owner does not contest Petitioner’s description of a person of ordinary skill in the art at this stage of the proceeding. Prelim. Resp. 14. Petitioner’s description of a person of ordinary skill appears to be consistent with the subject matter of the ’757 patent. We, therefore, adopt Petitioner’s assessment of a person of ordinary skill for purposes of this Decision. C.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 12
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Moreover, the test for obviousness is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Accordingly, one cannot show non-obviousness by attacking references individually where, as here, the This is particularly relevant here, where Petitioner explains that its rationale to combine the teachings of Chinn, Takahashi, and EX-V7 derives, in part, from the teachings of the references themselves. See, e.g., Pet. 10–11 (“Moreover, both Chinn and Takahashi disclose delayed image capture after a voice command is given,” and therefore, a person of ordinary skill in the art “would have been motivated to look at Takahashi and EX-V7 to improve Chinn, and vice-versa.”). Based upon the current record, we are persuaded that Petitioner has demonstrated sufficiently for purposes of institution that a person of ordinary skill in the art at the relevant time period would have had a reasoned basis for combining the teachings of Chinn, Takahashi, and EX-V7 in the manner proffered and would have had a reasonable expectation of success in that endeavor.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,223,757 - PTAB · Nov 7, 2024 · IPR2024-00735 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR of claims 1–15 based on the petition’s asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“1. 35 U.S.C. § 314(a) Patent Owner requests that we discretionarily deny institution under 35 U.S.C. § 314(a) due to the advanced state of the parallel district court action. See Prelim. Resp. 15. Petitioner, however, has stipulated not to pursue in the district court action “the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Paper 10, 1 (Petitioner’s Sotera Stipulation). The Office recognizes that such stipulations mitigate concerns of potentially conflicting decisions and duplicative efforts between the Board and the district court. See Director Memorandum, Interim Procedure for Discretionary Denials in AIA-Post Grant Proceedings With Parallel District Court Litigation, U.S. PATENT AND TRADEMARK OFFICE (June 21, 2022) (“Director’s Interim Procedure”),10 at 7–8. Thus, given Petitioner’s stipulation we decline to discretionarily deny institution under § 314(a).” slip op. at 7
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“Kaplan and Bryant were included on an Information Disclosure Statement and thus were presented, but without a substantive discussion during prosecution, we cannot understand how the Office considered the references. Based on Petitioner’s contentions as discussed below, we are persuaded that the Examiner erred in considering Kaplan and Bryant. See Pet. 97. The Horn–Baumgartner combination was not considered during prosecution, and Patent Owner has not shown that Horn’s disclosures are cumulative to references that were considered. Patent Owner provides figures from Horn and Honkaniemi (Ex. 2012), a reference considered in a related prosecution (Prelim. Resp. 6–7), but those figures alone do not suffice to demonstrate sufficient similarity between the two references’ disclosures. Patent Owner makes a similarly unpersuasive showing for Baumgartner and Volk (Ex. 2013), a reference “considered during examination.” Prelim. Resp. 7–8. None of those assertions persuade us that art substantially the same as the Horn–Baumgartner grounds previously were presented to the Office. As such, we do not discretionarily deny institution under § 325(d).” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons discussed above, we conclude Petitioner has shown a reasonable likelihood of prevailing with respect to at least one claim. We have evaluated all of the parties’ submissions and determine that the record supports institution. This decision to institute trial is not a final decision as to patentability of any challenged claim, or any factual or legal issue underlying patentability. Any final decision will be based on the full record developed during trial. We expressly inform Patent Owner that any argument not asserted in a timely filed Response or another manner permitted during trial shall be deemed forfeited or waived, regardless of whether the argument was presented in the Preliminary Response. IV. ORDER Accordingly, it is ORDERED that, pursuant to 35 U.S.C. § 314(a), inter partes review of claims 1–15 of the ’815 patent is instituted on the grounds set forth in the Petition; and” slip op. at 31
- Skill levelSkill level petitioner adoptedDecided for petitioner
“bachelor’s degree in computer science, electrical engineering, or a related field, and two years of practical experience in digital data management.” Pet. 5 (citing Ex. 1009, 9; Ex. 1003 ¶ 67). While Patent Owner acknowledges there are slight differences between their definition and Petitioner’s, Patent Owner concedes there is no practical difference between the two definitions. Prelim. Resp. 23. At this stage, we see no reason to depart from Petitioner’s proposed definition, as it appears reasonable and consistent with the asserted prior art and the ’815 patent.” slip op. at 8
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 11,017,815 - PTAB · Nov 4, 2024 · IPR2024-00828 · APJ Terrence W Mcmillin · IPR · Institution
The Board instituted IPR on claims 1, 2, 4–7, and 9–14 because the petition showed a reasonable likelihood of prevailing on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2020) (“The Board institutes the trial on behalf of the Director.”). The standard for institution is set forth in 35 U.S.C. § 314(a), which provides that 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.” After considering the Petition and the Preliminary Response, as well as the evidence of record, we institute an inter partes review as to claims 1, 2, 4–7, and 9–14 of the ’086 patent.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“skilled artisan would have been motivated to combine the relied-on teachings of Rogers and Rosenberg. Pet. 11–15 (citing Ex. 1003 (Nielsen Decl.) ¶¶ 86–91; Ex. 1006, code (57) (Abstract), 3:4–10, 4:15–19, 4:48– 62,7:59–62, Figs. 1, 2A; Ex. 1007, code (57) (Abstract), ¶¶ 30, 49, 50, Fig. 1). With regard to motivation to combine, the Petition provides: Both references are directed to allowing users to input information via touchsurface technology and are analogous art to the ’086 patent. . . . [A] POSITA would have found Rogers and Rosenberg to be compatible because of the technical similarity of their teachings, and a POSITA would have further recognized that Rosenberg’s finger orientation disclosures, applied to Rogers’ graphical passcode disclosures, would facilitate a “natural and intuitive” means of implementing the teachings of Rogers. A POSITA therefore would have been motivated to look to Rosenberg to improve Rogers, and vice-versa. . . . A POSITA . . . would have considered the disclosures in Rosenberg and been motivated to modify Rogers’ “large fingertip and a small stylus tip” example so that it instead used the “natural and intuitive” finger pad versus finger end distinction discussed in Rosenberg. A POSITA would have found this modification to be a simple substitution of elements well known in the art and would have had a reasonable expectation of success in achieving the benefits disclosed in Rosenberg by making the modification, which involved only routine skill. . . . [A]dding finger end and finger pad touch detection to Rogers would involve no more than applying a known technique (i.e., finger end and finger pad touch detection/distinction as taught by Rosenberg) to a known device ready for improvement (Rogers’ apparatus having “large fingertip and a small stylus tip” capabilities) to yield predictable results (simple to use touch screen interface with multipoint targeting and multi-finger gesturing). . . . It also would have been obvious to combine Rogers with Rosenberg because both references disclose touch screen interfaces that detect a contact area of a finger. . . . A POSITA would have considered Rosenberg’s disclosures and been motivated to modify the “graphical passcode” features of Rogers so that the disclosed device is capable of detecting information input by a pad or end of a finger, because it would provide a “generally easily distinguishable” basis upon which to program the device disclosed in Rogers to detect a “measurable parameter” based on “contact area.” A POSITA would have further recognized that these features of Rogers and Rosenberg could be successfully combined because both references teach a “calibration” mode in which the user trains the device to recognize a specific range of input parameters that allows for some variation in input while remaining within acceptable tolerances. . . . A POSITA would have had a reasonable expectation of success in modifying Rogers in this manner for at least the same reasons.” slip op. at 32
- Other 314aDecided for petitioner
“The Guidance Memo provides that “the PTAB will not discretionarily deny institution of an IPR or PGR in view of parallel district court litigation 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.” Guidance Memo 7. Petitioner has presented such a stipulation in this proceeding. Paper 8 (Petitioner’s Sotera Stipulation). Petitioner’s Stipulation states: In accordance with the Board’s precedential decision in Sotera Wireless, Inc. v. Masimo Corp., IPR2020‐01019, Paper 13 Available at http://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_ memo_20220621_.pdf. 12 at 18‐19 (PTAB Dec. 1, 2020), Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (Petitioners) stipulate that if the Board institutes inter partes review in this proceeding, IPR2024-00828, then Petitioners will not pursue in the parallel district court proceeding, Maxell Ltd. v. Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc., Case No. 5:23-cv-00092-RWS, the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Id. at 1. For this reason, we do not exercise our discretion to deny institution under Section 314(a).” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“[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 14 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. presented to the Office; and (2) if either condition of 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, IPR2019-01469, Paper 6 at 8.” slip op. at 45
§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 8,982,086 - PTAB · Oct 10, 2024 · IPR2024-00734 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 3, 15, 17, and 19–21, finding a reasonable likelihood of success on the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“to institute an inter partes review. We may institute an inter partes review only if “the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). The “reasonable likelihood” standard is “a higher standard than mere notice pleading” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018- 01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). Based on the current record and for the reasons explained below, Petitioner has shown that there is a reasonable likelihood that it would prevail with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1, 3, 15, 17, and 19–21 in the ’518 patent on all challenges included in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art at the time of the alleged invention “would have been someone”: (1) “knowledgeable with the computer networking techniques available at the time”; and (2) “who had a bachelor’s degree in computer science, computer engineering, electrical engineering, or an equivalent, and two years of experience working with computer networks, including network security.” Pet. 7. Petitioner also asserts that “[l]ack of work experience can be remedied by additional education, and vice versa.” Id. Dr. Crovella’s testimony supports Petitioner’s assertions. See Ex. 1003 ¶¶ 15–16. Based on the current record and for purposes of this decision, we accept Petitioner’s description of an ordinarily skilled artisan because it comports with the technology and claims of the ’518 patent as well as the asserted references. See Ex. 1003 ¶ 16.” slip op. at 13
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“[O]nly those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); see Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). Based on the current record, we determine that no claim term requires an explicit construction to decide whether Petitioner satisfies the “reasonable likelihood” standard for instituting trial. slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Based on the current record, Petitioner establishes sufficiently for purposes of institution that an ordinarily skilled artisan would have had reasons, i.e., as articulated by Dr. Crovella, to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes. See Pet. 14–21, 27, 29–31, 38; Ex. 1003 ¶¶ 51–58, 62–72, 91–92, 98, 101, 121. Based on the current record, Petitioner also establishes sufficiently that an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings of the references. See Pet. 16–17, 22, 38; Ex. 1003 ¶¶ 59–60, 73–74, 121. (f) Preliminary Conclusion About Alleged Obviousness As discussed above, Petitioner’s analysis addresses how the combined disclosures in Gai, Yip, and Kwan teach claim 1’s subject matter. See supra §§ III.D.4(a)–(d). Additionally, Petitioner provides reasons with rational underpinnings as to why an ordinarily skilled artisan would have been motivated to combine the teachings of Gai, Yip, and Kwan in the way Petitioner proposes and would have had a reasonable expectation of success. See supra § III.D.4(e). Hence, Petitioner demonstrates a reasonable likelihood of proving that claim 1 is unpatentable under § 103(a) because the claim would have been obvious over Gai, Yip, and Kwan.” slip op. at 34
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,623,518 - PTAB · Oct 1, 2024 · IPR2024-00692 · APJ Matthew S Meyers · IPR · Institution
The Board instituted IPR of claims 1–9 and 11–21 on all asserted grounds, finding a reasonable likelihood of prevailing on obviousness over Kane and Beckley.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine whether to institute an inter partes review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a) (2020). 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 any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least [one] of the claims challenged in the petition.”” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“conclude that, at this stage of the proceeding, Petitioner has shown a reasonable likelihood that it would prevail in challenging the patentability of independent claim 1. In our view, Petitioner’s analysis, on this record, adequately identifies where all the elements of claim 1 are found in Kane and Beckley. We also determine that Petitioner provides sufficient arguments and evidence, at this stage of the proceeding, to support its reasoning that a person having ordinary skill in the art would have been motivated to modify Kane’s compact wallet to incorporate the removable clip taught by Beckley, as Petitioner proposes.” slip op. at 34
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“As explained by the Federal Circuit, [f]or objective evidence of secondary considerations to be relevant, there must be a nexus between the merits of the claimed invention and the objective evidence. See In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995). A showing of nexus can be made in two ways: (1) via a presumption of nexus, or (2) via a showing that the evidence is a direct result of the unique characteristics of the claimed invention. A patent owner is entitled to a presumption of nexus when it shows that the asserted objective evidence is tied to a specific product that “embodies the claimed features, and is coextensive with them.” Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000).” slip op. at 37
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“previously were presented to the Office.”8 Our § 325(d) analysis employs a two-prong framework: (1) whether the prior art and arguments presented in the petition are the same or substantially the same as those previously presented to the Office; and (2) if so, whether the petitioner has demonstrated a material error by the Office in its prior consideration of those prior art and arguments. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6 (“Advanced Bionics”), 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 41
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,791,808 - Tesla, Inc. v. Iqar Inc.InstitutedPTAB · Sep 26, 2024 · IPR2024-00630 · APJ Sean P O’Hanlon · IPR · Institution
The Board instituted IPR on claims 1–16 under all asserted grounds, finding a reasonable likelihood that Koebler anticipates claims 1, 15, and 16 and that the asserted obviousness grounds succeed for at least some claims.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute only when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). A decision to institute may not institute on fewer than all claims challenged in the petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1354, 1359–60 (2018). If the Board institutes a trial, the Board will institute on all challenges raised in the petition. See 37 C.F.R. § 42.108(a) (“When instituting . . . review, the Board will authorize the review to proceed on all of the challenged claims and on all grounds of unpatentability asserted for each claim.”). We have authority, acting on the designation of the Director, to determine whether to institute an inter partes review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). For the reasons set forth below, upon considering the parties’ briefs and evidence of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the challenged claims. Thus, we institute inter partes review of all challenged claims based on all asserted grounds.” slip op. at 2
- Disclosure Requirements (§112) › Written description (Ariad)Not entitled to earlier dateOther
“require the Enumerated Current Conditions to be determined by analyzing data from the Enumerated Sensors, and it is this claimed invention for which the specification must provide written description support. 35 U.S.C. §§ 112(a), 120. Although, as discussed above, the claim requires only one Enumerated Sensor and one Enumerated Current Condition, it additionally requires that data from the sensor be analyzed to determine the current condition. Thus, to support the full scope of the claims, Koebler must disclose that each of the Enumerated Current Conditions is determined by analyzing data from one of the Enumerated Sensors. Although Petitioner asserts that Koebler does not provide written description support for ten of the Enumerated Sensors (see Pet. 10–11), Petitioner focuses its arguments on three of the current conditions (moisture, an amount of vibration, and traction) (see id. at 15–20), and we likewise focus our analysis on these three current conditions. Petitioner’s arguments for these three current conditions are substantially identical, including that Koebler does not teach or suggest using data from an Enumerated Sensor to determine each of the three current conditions. See id. at 15–19.” slip op. at 16
- Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference is prior artOther
“Thus, at this preliminary stage of the proceeding and based on the present record, we determine that Petitioner has established a reasonable likelihood that Koebler does not provide written description support for the claims of the ’616 patent. For completeness, we note that we find Petitioner’s arguments that Koebler does not provide verbatim or synonymous disclosure of the words “moisture,” “vibration,” or “traction” (see, e.g., Pet. 15–16) unavailing, as there is no requirement for verbatim or synonymous disclosure in the prior application. PowerOasis, 522 F.3d at 1306; Purdue Pharma, 230 F.3d at 1323. Similarly, there is no requirement for “inherent disclosure” of the recited current conditions. See, e.g., Pet. 16–17. Rather, as explained above, the relevant inquiry is whether the application relied upon (here, Koebler) reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Ariad Pharm., 598 F.3d at 1351.” slip op. at 17
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“Thus, under § 325(d), the Board uses the following 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 [the] challenged claims. Id. at 8.” slip op. at 20
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosureDiscretionary denialcites KSR · GrahamPatents in suitUS 10,850,616 - Fervo Energy Co. v. Ormat Technologies Inc.Institution deniedPTAB · Sep 18, 2024 · IPR2024-00665 · APJ Josiah C Cocks · IPR · Institution
Institution denied because Petitioner failed to show a reasonable likelihood of proving any challenged claim unpatentable under the proposed obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied
“II. ANALYSIS A. Principles of Law A petition must show how the construed claims are unpatentable under the statutory grounds it identifies. 37 C.F.R. § 42.104(b)(4). Petitioner bears the burden of demonstrating a reasonable likelihood that it would prevail with respect to at least one challenged claim for a petition to be granted. 35 U.S.C. § 314(a).” slip op. at 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art In determining the level of skill in the art, we consider the type of problems encountered in the art, the prior art solutions to those problems, the rapidity with which innovations are made, the sophistication of the technology, and the educational level of active workers in the field. Custom Accessories, Inc. v. Jeffrey-Allan Indus. Inc., 807 F.2d 955, 962 (Fed. Cir. 1986); Orthopedic Equip. Co. v. U.S., 702 F.2d 1005, 1011 (Fed. Cir. 1983). Petitioner contends the following assessment in connection with a person of ordinary skill in the art: The Challenged Claims pertain to a method of recovering geothermal heat. However, “[m]any of the techniques are derived from oil and gas industry.” EX1001 at 4:23-24. Accordingly, here, a person of ordinary skill in the art (“POSITA”) is a person with a Bachelor’s degree, Master’s degree, and/or Ph.D. in Chemical Engineering, Petroleum Engineering, Energy Resource Engineering, or the like, or at least five years of experience engineering, drilling, and constructing wells. Furthermore, a person with less formal education but more experience, or more formal education but less experience, could also have met the relevant standard for a POSITA. Pet. 16–17 (citing Ex. 1004 ¶¶ 34–36). Patent Owner does not offer its own assessment of a POSITA. For purpose of this Decision, we adopt Petitioner’s assessment.” slip op. at 9
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesOther
“own for any claim term. Patent Owner does, however, note that “claim element 9c[13] includes the terms ‘means for,’ which are presumed to invoke 13 The referenced “claim element 9c” reads in-part “Means for producing a water density difference and a pressure difference between said first means-plus-function treatment under Section 112.” Prelim. Resp. 17 (citing Samsung Electronics Co., Ltd. v. Power2B Inc., IPR2022-01378, Paper 12 at 11 (PTAB Mar. 15, 2023) (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc in relevant part))). Patent Owner further submits that “[u]nder Rule 104(b)(3),[14] Petitioner had an obligation to provide a construction of claim element 9c that includes both the claimed function and the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function.” Id. We agree with Patent Owner that the term “means for” when appearing in a claim triggers a rebuttable presumption that treatment under § 112 applies. On the record before us, however, Petitioner has not explained why the noted presumption has been rebutted or does not apply, and has not provided a construction of the pertinent “means for” term in the Petition in contradiction to the requirements of 37 C.F.R. § 104(b)(3).” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › HindsightNot shown unpatentableNot shown unpatentable
“While it is certainly the case that “a prior art reference is relevant for all that it teaches to those of ordinary skill in the art,” see In re Fritch, 972 F.2d 1260, 1264-65 (Fed. Cir. 1992), it is incumbent on a petitioner, in advancing a permissible theory of obviousness, to explain why a skilled artisan would recognize to pick and choose certain aspects of a reference and combine them with other aspects of the reference, particularly so where the reference itself does not suggest such combination. See In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986) (“It is impermissible within the framework of section 103 to pick and choose from any one reference only so much of it as will support a given position, to the exclusion of other parts necessary to the full appreciation of what such reference fairly suggests” ) (citation and inner quotes omitted). Here, Petitioner’s oscillation between different embodiments of Rinaldi in an attempt to reach the requirements of claim 1 is not adequately explained, and more closely resembles impermissible hindsight. See Metalcraft of Mayville, Inc. v. The Toro Co., 848 F.3d 1358, 1367 (Fed. Cir. 2017). (“[W]e cannot allow hindsight bias to be the thread that stitches together prior art patches into something that is the claimed invention.”). In sum, we determine that Petitioner has not shown a reasonable likelihood of prevailing in its assertion that claim 1 is unpatentable as a part of Petitioner’s proposed Ground 1.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · GrahamPatents in suitUS 7,320,221 - PTAB · Sep 6, 2024 · IPR2024-00431 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–4 under § 103 over Ashfary and Mirfakhraei, and claim 2 over Ashfary, Mirfakhraei, and Welles.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’518 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (the applied prior art may reflect an appropriate level of skill). Accordingly, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesTerm construed petitioner constructionDecided for petitioner
“1. “means for determining signal activity” Petitioner contends that the claimed function of “determining signal activity” does not require further construction. Pet. 24 (citing Ex. 1001, claim 2; Ex. 1002 ¶¶ 108–109). As to the corresponding structure, Petitioner asserts that the ’518 patent describes different approaches for determining signal activity. Id. Petitioner states that one approach is to perform a Fast Fourier Transform (FFT) on data samples from an analog-to-digital converter (ADC) using the same receiver signal path that is used for data communication. Id. at 24–25 (citing Ex. 1001, 8:51–9:27, 11:7–23; Ex. 1002 ¶¶ 109–110). Petitioner contends that another approach is to measure received signal power with an envelope detector. Id. at 25 (citing Ex. 1001, 11:23–29; Ex. 1002 ¶ 110). Petitioner asserts that the envelope detector is another corresponding structure for “determining signal activity.” Id. (citing Ex. 1002 ¶ 110).” slip op. at 10
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“We do not agree with Patent Owner’s argument that Mirfakhraei is not in the same field of endeavor, and therefore not analogous, to the ’518 patent. Mirfakhraei’s title, abstract, “Field of the Invention,” and claims describe its bit loading process for multicarrier communications generally, and do not limit its modems or receivers to using telephone lines as the communication medium. Ex. 1006, codes (54, 57), ¶ 1, claims 1–18. Although telephone lines are mentioned in the “Description of the Related Art” and “Detailed Description of the Preferred Embodiments” sections, Mirfakhraei cautions that “[a]lthough the invention has been described with reference to particular embodiments, the description is only an example of the invention’s application and should not be taken as a limitation.” Id. ¶ 36. Accordingly, we do not agree with Patent Owner’s argument that Mirfakhraei’s field of endeavor is limited to telephone lines or DSL, as Patent Owner argues.” slip op. at 20
Claim construction§ 103 obviousnessPatents in suitUS 7,295,518 - PTAB · Sep 6, 2024 · IPR2024-00430 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted IPR on claims 1–24 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314(a), an inter partes review may not be instituted unless the information presented in a petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition and Preliminary Response, and accompanying exhibits and evidence, we determine Petitioner has established a reasonable likelihood that it would prevail with respect to at least one challenged claim in the inter partes review. Therefore, we grant institution of an inter partes review as to all of the challenged claims of the ’690 patent on all challenges in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“A POSITA6 would have had a bachelor’s degree in electrical engineering, computer engineering, or a similar discipline, and three to four years of experience working in signal processing and/or communication systems/networks. Additional education may substitute for experience, and significant work experience may substitute for formal education. Pet. 6 (citing Ex. 1002 ¶¶ 115–120). Patent Owner does not dispute Petitioner’s proposed level of skill in the art, which is consistent with the prior art references asserted by Petitioner. Okajima v. Bourdeau, 261 F.3d 1350, 1354–55 (Fed. Cir. 2001) (stating that the applied prior art may reflect an appropriate level of skill). For this stage of the proceeding, we agree with and will use Petitioner’s proposed level for this Decision.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Since the parties apply what they contend is the plain and ordinary meaning of the claim terms in their briefs, and have stipulated in the Cox case that the plain and ordinary meaning applies, and Patent Owner argues that the district court’s construction in the Charter case is the plain and ordinary meaning, there is no controversy concerning claim terms that we need to resolve in this Decision. Pet. 6; Prelim. Resp. 10; Ex. 1005, 104–105; Ex. 2001, 2. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). At this stage of the proceeding, therefore, we apply the plain and ordinary meaning to the claim terms consistent with their ordinary and customary meaning under 37 C.F.R. § 42.100(b). We note, however, that Patent Owner seems to consider the court’s construction in the Charter case to require that the claimed “probe” must be of a type that can be compared with a reference signal. Prelim. Resp. 10. We question whether all of the different types of probes mentioned and claimed in the ’690 patent would require comparison with a reference signal. See, e.g., Ex. 1001, 2:7–19. However, this is a matter best resolved, if necessary, on a full record at trial.” slip op. at 14
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableUnpatentableMixed
“Prelim. Resp. 23 (citing Ex. 1013, 37) (annotated in red by Patent Owner). IEEE-802.16’s Table 5 shows that the CID is a field of a generic MAC header. Petitioner does not show sufficiently that the CID, located in the header, specifies content payload of a MAC message, as required by limitation 1A. Petitioner alternatively relies on IEEE-802.16’s ranging code index that it contends is another example of data that is in a ranging request parameter and is used for the ranging response payload. Pet. 15 (citing Ex. 1013, 49–51, 204–213, 576–579, 665–66; Ex. 1002 ¶ 149). Patent Owner asserts that the portions of IEEE-802.16 that Petitioner cites do not disclose that the ranging code index is sent as part of a ranging request message. Prelim. Resp. 25. Although the parts of IEEE-802.16 that Petitioner cites disclose that the ranging code index is sent from the SS to the BS and is included in a ranging response (Ex. 1013, 49–51, 204–213, 576–579, 665–66), the cited parts do not disclose that the SS sends the ranging code index to the BS in a ranging request. Consequently, Petitioner has not established that IEEE- 802.16 anticipates a ranging code index that is a parameter of a ranging request specifying the content payload of the ranging response corresponding to limitation 1A. For the foregoing reasons, on this record, we determine that Petitioner has not shown a reasonable likelihood to prevail in showing that claim 1 is anticipated by IEEE 802.16.” slip op. at 18
Claim construction§ 102 anticipation§ 103 obviousnesscites KSRPatents in suitUS 8,284,690
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.