- Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01207 · APJ Robert L Kinder · IPR · Institution
The Board instituted IPR on claims 1–22, finding a reasonable likelihood that at least one claim is unpatentable under the asserted obviousness grounds.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“validity repeats all of the assertions in this Petition.” Prelim. Resp. 13. Thus, a significant portion of the resources consumed in preparing for trial would likely be useful in this proceeding. On November 11, 2024, Petitioner offered a stipulation, stating that, upon institution on this proceeding, Petitioner “will not pursue as to the challenged claims any ground raised or that reasonably could have been raised during the IPR” in the parallel litigation. See Ex. 1043 (filed in this proceeding Nov. 27, 2024). Petitioner’s stipulation applies to the following proceedings, which includes this proceeding: IPR2024-01205, challenging claims 1–20 of U.S. Patent No. 7,593,034; IPR2024-01206, challenging claims 1–13 of U.S. Patent No. 9,485,471; IPR2024-01207, challenging claims 1–22 of U.S. Patent No. 8,692,882; and IPR2024-01208, challenging claims 1–23 of U.S. Patent” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons arguments do not directly address the specific combination proposed by Petitioner nor the specific motivations provided by Petitioner. For example, as explained further below in our analysis of claim 1, the gun embodiment of Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’s video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’s gun implementation in which individual segments are stored in the circular buffer. See Pet. 28 (“Yerazunis does disclose that in a gun camera embodiment, ‘the head pointer 104 and the tail pointer 102 . . . defining the area(s) of the circular buffer memory, are stored in a table to allow later retrieval of the video data pertaining to each firing of the gun.’” (quoting Ex. 1017, 17:50–56)); see also Pet. 30–32, 38–39.” slip op. at 22
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableInstituted
“of Yerazunis in combination with Fiore. On this record, Petitioner has demonstrated the similarities in the data recording systems of Yerazunis and Fiore. Petitioner asserts a reasonably sufficient basis for establishing the “specified frame data associated with [the] firing event” to be preserved as the disclosure of a designated segment that is write-protected. Based on the current record, we find Petitioner’s evidence more persuasive than Patent Owner’s assertion that Yerazunis preserves the entire buffer—not designated segments. Again, Petitioner admits Yerazunis does not expressly refer to “indexing write-protected segments as second files” but further establishes with sufficient basis that a person of ordinary skill in the art would understand the tagging features of Yerazunis aligns with the concept of indexing. Further, Petitioner shows that eventually it will be necessitated to locate or retrieve the data, providing further motivation for indexing, which is not only disclosed in Fiore, but demonstrated as well known in the art. See Pet. 28–29. Petitioner demonstrates the combination of Fiore and thus, on the current record, we are not persuaded by Patent Owner’s argument that Yerazunis only preserves post-recording data. Patent Owner further does not provide sufficient basis of reasoning that the “memory designation scheme” of Yerazunis which uses “unused block[s] of memory” establishes there is no write-protected segment. In consideration of the above, we are persuaded for purposes of this Decision that Petitioner has cited sufficient evidence to demonstrate that person of ordinary skill in the art would have had a rational basis to combine the teachings of Yerazunis and Fiore and this combination teaches these limitations of element 4.” slip op. at 33
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,692,882 - Motorola Solutions, Inc. v. Stellar LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01208 · APJ Brian J Mcnamara · IPR · Institution
The Board instituted IPR on claims 1–23 on all four §103 grounds, finding a reasonable likelihood of success based on Yerazunis or Ely, with Fiore and Lewellen.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–17. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5–6 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”). In evaluating these factors, we “take[] a” slip op. at 3
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(“Petition” or “Pet.”), to institute an inter partes review (“IPR”) of claims 1– 23 (the “challenged claims”) of U.S. Patent No. 9,912,914 B2 (Ex. 1031, “the ’914 patent”). 35 U.S.C. § 311. Stellar LLC (“Patent Owner”) filed a Preliminary Response, Paper 8 (“Prelim. Resp.”), contending that the Petition should be denied as to all challenged claims. We have jurisdiction under 35 U.S.C. § 6, which provides that an inter partes review may not be instituted unless the information presented in the Petition “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” A decision to institute under § 314 may not institute on fewer than all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). In addition, per Board practice, if the Board institutes trial, it will institute “on all of the challenged claims and on all grounds of unpatentability asserted for each claim.” See 37 C.F.R. § 42.108(a). Having considered the arguments and the associated evidence presented in the Petition and the Preliminary Response, for the reasons described below, we institute inter partes review.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
“Contentions Concerning Reasons to Combine Teachings of Yerazunis and Fiore Noting that Yerazunis and Fiore both concern recording devices with circular buffers that preserve data before and after a trigger event, Petitioner contends that an ordinarily skilled artisan would have had reason to combine the teachings of the references to incorporate into Yerazunis the benefits Fiore articulates concerning its file-based storage approach in such systems. Pet. 21. Petitioner emphasizes Fiore’s discussion of how implementing a circular buffer as a memory mapped file that indexes event data combines the access speed of the RAM memory with the large capacity of a disk file, making the indexing of data in memory mapped file 110 transparent to the circular buffer’s access objects. Id. at 21–22. Petitioner also emphasizes that an ordinarily skilled artisan would have had a reasonable expectation of success, given Fiore’s detailed disclosure of applying its techniques in a system like that of Yerzunis. Id. at 22 (citing Ex. 1003, Sarhan Decl. ¶¶ 168–172).” slip op. at 16
- Skill levelSkill level petitioner adoptedDecided for petitioner
“VIII. LEVEL OF ORDINARY SKILL IN THE ART Petitioner describes a person of ordinary skill in the art (“POSITA” or “ordinarily skilled artisan”) as having “at least a Bachelor’s Degree in electrical engineering, computer science, or computer engineering, or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003, Sarhan Decl. ¶¶ 24–25). Petitioner further states that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. Patent Owner does not address the qualifications of a person of ordinary skill in the art. See Prelim. Resp. The level of ordinary skill in the art usually is evidenced by the references themselves. 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). As Petitioner’s proposed description of a person of ordinary is commensurate with the subject matter” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,912,914 - Motorola Solutions, Inc. v. Stellar, LLCInstitutedPTAB · Feb 13, 2025 · IPR2024-01205 · APJ Nabeel U Khan · IPR · Institution
The Board instituted inter partes review of claims 1–20 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim would be shown unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“exercise our discretion to deny the Petition in favor of the parallel litigation. Prelim. Resp. 5–18. The Board has held that the advanced state of a parallel district court action is a factor that may weigh in favor of denying a petition under § 314(a). See NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential); Trial Practice Guide, 58 & n.2. We consider the following factors to assess “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding”:” slip op. at 8
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’034 patent and we exercise our discretion to institute inter partes review as to all the challenged claims of the ’034 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this stage of the proceeding, we are persuaded that Petitioner has established a reasonable likelihood that a person of ordinary skill would have combined the teachings of Yerazunis and Fiore for the reasons provided by Petitioner and summarized above. Several of Patent Owner’s arguments do not directly address the specific combination proposed by Petitioner nor the specific motivation provided by Petitioner. For example, Yerazunis does not stop recording video after a triggering event. See Ex. 1017, 17:50–59. Moreover, Fiore’s file-based approach would provide the benefits highlighted by Petitioner regardless of whether Yerazunis stops recording video after a triggering event or continues recording to the next event. Similarly, the argument that Fiore does not selectively write protect data does not address Petitioner’s combination, which relies on Yerazunis, not Fiore, for teaching selectively write protecting data. Patent Owner’s argument also does not explain why a person of ordinary skill would not use Fiore’s file-based approach in implementing Yerazunis’ video recording device. Finally, Patent Owner’s argument that Fiore does not store individual segments within the circular buffer does not address Petitioner’s reliance on Yerazunis’ gun implementation in which individual segments are stored in the circular buffer. See Pet. 32 (citing Ex. 1017, 3:25–38, 8:26–30, 15:9–13, 17:48–59).” slip op. at 21
- Skill levelSkill level board ownOther
“or undergraduate training in an equivalent field and at least two years of relevant experience in electronics technology.” Pet. 7 (citing Ex. 1003 ¶¶ 24–25). Dr. Sarhan further opines that “[a]dditional graduate education could substitute for professional experience, and significant work experience could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 24–25). Patent Owner does not contest Petitioner’s proposed level of ordinary skill. See generally Prelim. Resp. For purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill, which is supported by Dr. Sarhan’s testimony, except that we find that the phrase “at least” in Petitioner’s proposed definition creates a vague, open-ended upper bound for the level of ordinary skill, and we therefore do not adopt that aspect of the proposal.” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 7,593,034 - PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 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).” slip op. at 10
- 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). 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
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Interactive Communications International, Inc. v. Blackhawk Network Inc.No claims unpatentablePTAB · Feb 6, 2025 · IPR2023-01235 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6 were not shown unpatentable under either obviousness ground because Szrek did not disclose a pre-printed lottery ticket without lottery numbers associated at customer purchase.
RulingsFinal written decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“real party in interest. Prelim. Resp. 1–2, 32–34. In the Institution Decision, we stated: To the extent Patent Owner seeks to pursue its argument that Linq3 is a real party of interest to Petitioner, even though no time bar under 35 U.S.C. § 315(b) has been asserted, Patent Owner may raise the issue of real party in interest again in its Patent Owner Response and the parties may brief and argue the issue during trial. Inst. Dec. 11. In its Patent Owner Response, Patent Owner did not raise the issue of challenging Petitioner’s identified real party in interest. See generally PO Resp. Thus, we need not address this issue further because we find that Patent Owner has waived any challenge to Petitioner’s identification of the real parties in interest in this proceeding. See Paper 12 (Scheduling Order), 9 (“Patent Owner is cautioned that any arguments not raised in the response may be deemed waived.”).” slip op. at 5
- Skill levelSkill level petitioner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner proposes that the level of ordinary skill in the art is an artisan with a working knowledge of POS activation systems and lottery systems that was gained through a mixture of training and work experience in the relevant field such as (i) having a Bachelor’s degree in computer science, computer communications, electrical engineering, or equivalent degree, coupled with at least three years of work experience; (ii) having a Master’s degree in computer science, computer communications, or electrical engineering, but having less work experience; or (iii) having no formal degree, but having experience in the relevant field of at least six years of work experience. Pet. 2–3 (citing Ex. 1003 ¶ 13).5 Patent Owner states that, “[f]or the purpose of this proceeding, Patent Owner adopts the Petition’s proposed definition of the level of ordinary skill in the art.” PO Resp. 19. 5 Petitioner proposes the same level of ordinary skill in the art that the Board adopted in PGR2020-00084. Pet. 2–3 (citing Ex. 1008, 11). We find that the parties’ agreed-upon level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’135 patent and the prior art of record. See Inst. Dec. 14; 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 the parties’ agreed-upon level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 12
- Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalTerm construed patent owner constructionDisclaimer foundDecided for patent owner
“Following the block quote from Yacenda, the applicant then stated, “[b]ased on the foregoing, Yacenda’s system is directly opposite of the instant claims, as the instant claims require a ‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.’” Ex. 1002, 76. This statement is clear and unmistakable. It (1) specifically states that “the instant claims require” and (2) then states what the claims require—a “‘pre-printed lottery ticket’ which has no lottery numbers associated with it at the time of customer purchase.” We fail to see how the applicant could have been more clear in stating a requirement of the Challenged Claims. And, by doing so, the applicant narrowed the scope of what would otherwise be encompassed in the meaning of “pre-printed lottery ticket” and therefore what would otherwise be encompassed in the scope of the Challenged Claims—a lottery ticket which has lottery numbers associated with it at the time of customer purchase.” slip op. at 27
- Expert testimonyPetitioner expert discountedDecided for patent owner
“We do not find Mr. Hutton’s testimony particularly helpful. First, we have addressed the points raised by his testimony in our discussion above because they are largely the same as the arguments raised in Petitioner’s Reply. Second, we find his testimony entitled to very little weight because he applies an incorrect understanding of the caselaw, which mirrors Petitioner’s incorrect and arguably misleading quotations of the Federal Circuit’s decision in Quest. In particular, in paragraph 5, Mr. Hutton states the following as his understanding of the law as it applies to prosecution disclaimer: “I also understand that in order to disclaim embodiments within the specification, the statements should have some indication that the applicant intended to surrender embodiments from the specification.” Ex. 1038 ¶ 5 (emphasis added). This then leads Mr. Hutton to state: “[t]hus, in my opinion, a [person of ordinary skill in the art] would not view applicant’s statements as a disclaimer, because the applicant never stated that they intended to surrender multiple embodiments described in the specification.” Id. ¶ 13 (emphasis added). As we explained above in responding to a similar argument by Petitioner, the caselaw does not require an applicant to expressly state whether a disclaimer excludes particular embodiments of the subject specification when disclaiming claim scope during prosecution. See Quest, 924 F.3d at 1229. And, as noted above, counsel for Petitioner agreed that such a statement explicitly disclaiming particular embodiments is not required. Tr. 12:18–13:17. Third, although we have considered Mr. Hutton’s testimony, we find it “less significant than the intrinsic record in determining the legally operative meaning of” “pre-printed lottery ticket.” Phillips, 415 F.3d at 1317. In particular, we are cognizant of the Federal Circuit’s guidance that we “should discount any expert testimony that is clearly at odds with the claim construction mandated by . . . the prosecution history.” Id. at 1318 (internal quotation omitted). In this instance, for the reasons explained above, we find that Mr. Hutton’s testimony is clearly at odds with the applicant’s arguments during prosecution and that his testimony is based on a misunderstanding of what is required by the governing caselaw for prosecution history disclaimer.” slip op. at 43
Patent outcomesUS 9,865,135 not shown unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,865,135 - Samsung Electronics Co., Ltd. / Samsung Electronics, America, Inc. v. Cerence Operating CompanyInstitutedPTAB · Jan 31, 2025 · IPR2024-01267 · APJ Lisa A Murray · IPR · Institution
The Board instituted IPR on claims 1–3, 7–9, 12, and 13 on all petitioned grounds, finding a reasonable likelihood that claim 1 is obvious over Arai and Fenwick.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the PTAB will not discretionarily deny institution of an IPR . . . 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. Petitioner’s stipulation in Exhibit 1020 satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor before determining that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation. In light of Petitioner’s stipulation, Patent Owner’s request is denied.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“any evidence of objective indicia of nonobviousness. We conclude that on balance, considering the record presently before us, Petitioner has established a reasonable likelihood of showing that the differences between the subject matter of claim 1 and the teachings of Arai and Fenwick are such that the subject matter, as a whole, would have been obvious at the time of the invention to a person having ordinary skill in the art. e. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established a reasonable likelihood that it would prevail in showing that the combination of Arai and Fenwick teaches or suggests each element of claim 1 of the ’428 patent. See 35 U.S.C. § 314(a).” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’428 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).” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Relying on the Declaration of Jean Renard Ward, Petitioner contends that “[a] POSITA would have been motivated to incorporate[] Fenwick’s teachings regarding automatically sending recognized words to an application into Arai because this would have furthered Arai’s purpose of having a natural, uninterrupted flow in entering characters without having to press extra keys.” Pet. 31–32 (citing Ex. 1002 ¶ 139). Petitioner concludes that the combination would have been obvious in that it would apply Fenwick’s known technique for recognizing words without additional user confirmation to Arai’s known method of performing handwriting recognition, ready for improvement, to yield the predictable result of the Arai/Fenwick combination: “recognition results are sent to an application without further user confirmation—e.g., pressing the Enter Key—and handwritten character recognition results are removed from the temporary memory such as RAM when the recognition results are sent to the application.” Id. at 32 (citing Ex. 1002 ¶ 140).” slip op. at 18
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 9,026,428 - PTAB · Jan 31, 2025 · IPR2024-00979 · APJ Lisa A Murray · IPR · Institution
The Board instituted inter partes review of claims 1–18 on all four asserted obviousness grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“As set forth in the Director’s Memorandum, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (dated June 21, 2022), at 7, available at https://www.uspto. gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_ parallel_district_court_litigation_memo_20220621_.pdf, the PTAB will not discretionarily deny institution of an IPR . . . 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. Petitioner’s stipulation (Ex. 1018) satisfies the language from the Director’s Memorandum quoted above. Therefore, we need not analyze each Fintiv factor to reach the determination that we will not exercise our discretion to deny institution in view of the parallel Eastern District of Texas Litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 57. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 57 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co., a subsidiary of Cerence, Inc., as a real party in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending that Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art and believes that “the Board could assume Petitioner’s proposed level of ordinary skill for the purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’993 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).” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Plain and ordinary meaningOther
“Additionally, only terms that are in controversy need to be construed, and these need to 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)). At this time, neither party proposes a specific construction of any given claim term, instead requesting that the claims be given their plain and ordinary meaning. Pet. 10–11; Prelim. Resp. 5.” slip op. at 11
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,081,993 - PTAB · Jan 27, 2025 · IPR2024-01142 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution on claims 5, 6, 8, 13, 14, 16, and 18 under § 314(a), concluding the Fintiv factors favored discretionary denial.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“denial because district court is very likely to address patentability issues at trial before we would issue a final written decision. Factors 3 and 4 weigh marginally against discretionary denial. Factor 5 either weighs in favor of discretionary denial or is neutral, but even if it were neutral, factor 2 alone outweighs the marginal weight of factors 3 and 4. Based on our assessment, we determine that Fintiv Factors 1–5 favor exercising discretion to deny institution. With that determination in mind, we proceed to evaluate Fintiv Factor 6. G. Fintiv Factor 6: Other Circumstances that Impact the Board’s Exercise” slip op. at 18
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“We further note that Petitioner’s general view that it would have been obvious to a person of ordinary skill in the art to modify Jung to arrive at the pertinent limitation is not well supported and somewhat circular. See Pet. 42–43. It is inadequately explained why a skilled artisan would have reasonably sought to modify Jung so that it then “expressly teaches” what is required by the claims, as is advanced by Petitioner. See id. at 42. It is a dubious proposition that simply seeking to account for the requirements of the challenged claims serves as suitable reasoning that would have prompted modification of the “express[] teach[ings]” of a reference.” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“[A] person of ordinary skill in the art at the time of the alleged invention of the ’868 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 48. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 20–21. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 19
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed patent owner constructionDecided for patent owner
“proceeding. See Pet. 12. Patent Owner provides a construction of the phrase “to derive, based on a beam reference signal of the network beam, a UE beam,” which Patent Owner contends is not necessary to substantiate its arguments, but is offered to “elucidate[] the distinction between the ’868 Patent and the alleged prior art from the reasons” offered by Patent Owner in its Preliminary Response. PO Resp. 8. In particular, Patent Owner contends that the above-noted phrase means “selecting a UE beam from a plurality of candidate UE beams based on a beam reference signal of the network beam.” Id. Patent Owner explains the basis for its proposed construction of the relevant phrase through citation to content of the ’868 patent including Figures 21 and 22 of the patent along with description of those Figures. See Prelim. Resp. 8–10. In reviewing the basis for Patent Owner’s proposed claim construction, we conclude that the construction has ample and adequate support in the record before us. We determine that no other claim term need be addressed expressly See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,887,868 - PTAB · Jan 27, 2025 · IPR2024-01121 · APJ Josiah C Cocks · IPR · Institution
The Board denied institution under Fintiv, finding that the parallel district court proceedings would likely address patentability before a final written decision and the merits were not compelling.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“In Fintiv, the Board explained that “cases addressing earlier trial dates as a basis for denial under NHK Spring have sought to balance considerations such as system efficiency, fairness, and patent quality.” Fintiv, Paper 11 at 5. Fintiv sets forth six non-exclusive factors for determining “whether efficiency, fairness, and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding.” Id. at 6. These factors consider the following: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. at 5–6. In evaluating these factors, “the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“2. Claim Construction In interpreting the claims of the ’402 patent, we “us[e] the same claim construction standard that would be used to construe the claim[s] in a civil action under 35 U.S.C. [§] 282(b).” See 37 C.F.R. § 42.100(b) (2020). The claim construction standard includes construing claims in accordance with the ordinary and customary meaning of such claims as would have been understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. See id.; Phillips v. AWH Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc). The parties each contend that resolution of this proceeding does not require that the meaning of any claim term be made explicit. See Pet. 15; Prelim. Resp. 8. We agree. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))).” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“1. Level of Ordinary Skill As part of our compelling-merits analysis, we consider the level of ordinary skill in the art. See Phillips v. AWH Corp., 415 F.3d 1303, 1312– 1313 (Fed. Cir. 2005) (en banc) (the level of ordinary skill is pertinent to claim construction); Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966) (the level of ordinary skill is one of the factors to consider when determining obviousness). Petitioner proposes the following: [A] person of ordinary skill in the art at the time of the alleged invention of the ’402 patent (“POSITA”) would have had a B.S. in Electrical Engineering or a related field with at least three years of experience designing, developing, and/or testing telecommunication systems. Ex-1003, ¶ 73. A POSITA would also have familiarity with the wireless standards and well-known protocols for accessing wireless networks. Id. More education may supplement practical experience or vice versa. Id. Pet. 21–22. Patent Owner does not offer an assessment of its own, or dispute Petitioner’s proposed level of ordinary skill in the art. For this decision, we adopt Petitioner’s proposed level of ordinary skill.” slip op. at 17
- BurdenNot reached
“outset, we note that the language of claims 1 and 12 is clear in reciting the presence of two distinct signals, i.e., a control signal and a reference signal, and that it is the control signal that “triggers” transmission of the reference signal. See Ex. 1001, 14:5–6, 60–62. Patent Owner credibly argues that the “two-step embodiment” of Figure 10 of the ’402 patent, and in particular steps 1005 and 1010, describe the control and reference signal transmissions that are encompassed by claims 1 and 12. See Prelim. Resp 8–10. Patent Owner also credibly argues that the Figure 10 embodiment is distinct from other disclosed embodiments, including the “single-step embodiment” of Figure 8. See id. at 10–11. Patent Owner further explains reasonably that the content of column 6 of the ’402 patent on which Petitioner relies has a more “natural reading” in distinguishing between separate transmission of a “control signal” that “triggers” separate transmission of a “reference signal” as described in connection with Figure 10 as juxtaposed with transmission of a “control channel,” which is distinct from a control signal, and a “reference signal” that may constitute a single transmission, as is described in conjunction with Figure 8. See id. at 16–17. It logically follows that if, as Patent Owner credibly argues, the claims of the ’402 patent do encompass the latter transmission scheme, rather than the former, then Petitioner’s reliance on Moon, as presented in its Petition, is insufficient to account for those claims. On this record, we need not decide whether Petitioner would likely prevail on the above-noted issues as Patent Owner raises sufficiently substantial arguments that the preliminary evidence, if unrebutted in trial, does not plainly lead to a conclusion that claim 1 is unpatentable by a preponderance of the evidence. Because, as noted above, Patent Owner has identified potentially dispositive gaps or flaws in Petitioner’s apprehension as to what is adequate in Moon’s disclosure to account for the claims of the ’402 patent, Petitioner’s proposed grounds cannot be said to rise to the level of a “compelling” meritorious challenge.” slip op. at 22
Claim constructionDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,148,402 - PTAB · Jan 27, 2025 · IPR2024-01179 · APJ Carl M Defranco · IPR · Institution
The Board instituted IPR of claims 1–25; it found a reasonable likelihood that claims 1, 2, 4–11, 16–20, and 22–24 are obvious over Waldner and Dynatek.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find that Solaris demonstrates a reasonable likelihood that claim 1 is unpatentable” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Based on our preliminary review, we agree with Solaris that Waldner discloses each of the assemblies, as claimed, except for the limitation requiring that the “inboard” and “outboard” segments of the conveyor extension assembly be “pivotally connected” to each other “about a substantially vertical axis,” as recited in claim elements 1(j) and 1(k). See Pet. 25–46 (mapping elements 1(a)–1(h) to Waldner and elements 1(i)–1(k) to Waldner and Dynatek).7 For those missing claim limitations, Solaris relies on Dynatek’s express teaching of constructing a conveyor belt assembly for granular materials from pivotally-connected segments capable of rotating relative to one another about a vertical axis. See id. at 43–46 (citing Ex, 1005, at 2). In doing so, Solaris provides persuasive reasoning for why a skilled artisan would have considered it obvious “to substitute” Dynatek’s two-part conveyor assembly for Waldner’s two-part conveyor chute and/or “to modify” Waldner’s two-part conveyor chute with Dynatek’s teaching of coupling the two-parts of a conveyor assembly to be pivotally connected. See id. at 26–28. Given Solaris’s persuasive and detailed showing at this stage, we find” slip op. at 8
§ 103 obviousnessPatents in suitUS 11,780,689
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.