- PTAB · Aug 2, 2023 · IPR2023-00454 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–15 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (USPTO June 21, 2022) (“Interim Procedure”)6 provides that “the PTAB will not deny institution of an IPR or PGR under Fintiv . . . where a petitioner stipulates not to pursue in a parallel district 2 US 7,363,422 B2, issued Apr. 22, 2008 (Ex. 1071). 3 Joint Electron Devices Engineering Council (JEDEC) DDR2 SDRAM Specification (JESD79-2), September 2003 (Ex. 1064). 4 US 2006/0277355 A1, published Dec. 7, 2006 (Ex. 1073). 5 US 7,024,518 B2, issued Apr. 4, 2006 (Ex. 1078). 6 Available at https://www.uspto.gov/sites/default/files/documents/interim_proc_discretion ary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf. court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” Interim Procedure 9. Petitioner has submitted such a stipulation for all claims in this proceeding, which are all of the claims of the ’417 patent. Ex. 1093; Paper 8 at 1; Paper 9 at 1. Thus, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 5
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “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.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, 7 Chapter 31 (35 U.S.C. §§ 311–319) relates to inter partes review. IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“competent evidence” to show that “the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. Prelim. Resp. 44. We disagree. Petitioner presents detailed testimony from Dr. Wolfe explaining how Perego’s registered data transfers would have introduced delay. In particular, Dr. Wolfe, citing Perego’s disclosures of data latches and an internal clock to generate synchronizing clock signals (Ex. 1071, 12:65–13:5, 17:61–63, Fig. C), provides the following testimony: A Skilled Artisan would have understood from these disclosures that Perego’s latching of the data signals and the use of internal synchronizing clock signals adds a predetermined amount of time delay for each data transfer through the buffer because the output of the latch needs to be in synchronization with an internal clock. A Skilled Artisan would have understood that such registering of the data signals would require the addition of a fixed time delay, such as one clock cycle, for each registered data transfer through the circuitry with respect to the actual operational CAS latency of each of the plurality of memory integrated circuits. Ex. 1003 ¶ 360. Dr. Wolfe further explains how Perego’s “latching delays in the buffer device of Perego increase the overall CAS latency of the memory module compared to the CAS latency of the memory devices.” Ex. 1003 ¶ 362 (citing Ex. 1071, 12:65–13:5, 18:65–19:3, Figs. 5B, 5C). On this record, we find Petitioner’s evidence sufficiently persuasive to show that Perego teaches that “data transfers through the circuitry are registered for an amount of time delay such that the overall CAS latency of the memory module is greater than an actual operational CAS latency of each of the memory devices,” as recited in claim 1. We are sufficiently persuaded by Petitioner’s contentions for the” slip op. at 33
- Skill levelSkill level board ownOther
“To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, except that we delete the qualifier “at least” to eliminate vagueness as to the amount of experience. The qualifier expands the range indefinitely without an upper bound, and thus precludes a meaningful indication of the level of ordinary skill in the art.” slip op. at 11
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 11,093,417 - PTAB · Jul 25, 2023 · IPR2023-00294 · APJ Christa P Zado · IPR · Institution
The Board instituted inter partes review of claims 1–6 on all asserted §103 grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We determine that factors 1–5 do not favor discretionary denial. As discussed above, factors 1–4 weigh against exercising our discretion to deny institution. Although factor 5 weighs in favor of denial due to similarity of parties, when balanced with factors 1–4, there is no indication of inefficiencies or duplication of efforts between the PTAB and the district court, as discussed above, and factors 1–5 taken together weigh against discretionary denial. Therefore, consistent with Commscope, because Fintiv factors 1–5 do not favor discretionary denial, we decline to discretionarily deny institution under Fintiv, without reaching the compelling merits analysis.” slip op. at 14
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“III. CONCLUSION For the reasons expressed above, we determine that Petitioner has demonstrated a reasonable likelihood of showing that at least one claim of the ’498 patent is unpatentable. As set forth in the Order below, we institute a trial on all challenged claims and all asserted grounds of unpatentability. See 37 C.F.R. § 42.108(a) (“When instituting inter partes 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.”). Our factual findings and determinations at this stage of the proceeding are preliminary and based on the evidentiary record developed thus far. This is not a final decision as to the patentability of claims for which inter partes review is instituted. Our final decision will be based on the record as fully developed during trial. IV. ORDER Accordingly, it is ORDERED that an inter partes review is instituted as to all challenged claims on all the grounds raised in the Petition; and FURTHER ORDERED that inter partes review is instituted” slip op. at 52
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends “[t]he level of ordinary skill encompassed a person having a Bachelor’s Degree in electrical engineering or a related field and three years of experience relating to audio technology or signal processing, where a higher level of education may substitute for experience.” Pet. 32–33 (citing Ex. 1002 ¶ 69). At this stage in the proceeding, Patent Owner does not provide a contention as to the level of ordinary skill in the art. Based on the record presented, including our review of the ’498 patent and the types of problems and solutions described in the patent and the cited prior art, we adopt Petitioner’s assessment of the level of ordinary skill in the art and apply it for purposes of this Decision. To the extent the parties disagree as to the level of ordinary skill in the art, the parties may address the issue in their papers during trial and explain, for example, how a different definition would impact the obviousness analysis of the challenged claims.” slip op. at 18
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner proposes a construction for the term “turntable.” Pet. 20– 21. Patent Owner is silent on the issue of claim construction and does not raise any arguments that necessitate a construction of “turntable.” For purposes of this Decision, we determine that no claim terms require express construction. See Vivid Techs., 200 F.3d at 803 (holding that only terms that are in controversy need to be construed, and “only to the extent necessary to resolve the controversy”).” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,567,498 - PTAB · Jul 19, 2023 · IPR2023-00450 · APJ Amber L Hagy · IPR · Institution
The Board instituted IPR on claims 1–11 and all petition grounds after finding a reasonable likelihood that at least one challenged claim was unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“In evaluating arguments under Section 325(d), we use a two-part framework, determining, first, “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.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential). If either condition of the first part of the framework is satisfied, we then determine “whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims.” Id.” slip op. at 11
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“’706 patent purportedly to correct its priority information; and (2) pending the present IPR. Ex. 2003, 1–2. In particular, the parties agreed to stay the Underlying Litigations until at least issuance of a decision on the institution of the present IPR. Id. at 2. Meanwhile, as Patent Owner acknowledges, these cases do not have a trial date. Prelim. Resp. 15–16. In light of this development, it is not necessary to analyze the Fintiv factors in detail because the Underlying Litigations are not currently proceeding in parallel with this case. Although Patent Owner characterizes the stay of the Underlying Litigations as “neutral,” representing that the stay is “based on alleged concerns about the reissue proceeding” (Prelim. Resp. 16), we disagree. First, the stipulated stay is not merely in view of the reissue proceeding, but also in view of the present IPR. See Ex. 2003, 1–2. Second, our precedent in Fintiv recognizes that a stay of parallel litigation is not merely neutral, but weighs strongly against exercising discretion to deny institution. See, e.g., Fintiv Order, Paper 11 at 6 (“A district court stay of the litigation pending resolution of the PTAB trial allays concerns about inefficiency and duplication of efforts. This fact has strongly weighed against exercising the authority to deny institution under NHK.”); see also Precision Planting, LLC v. Deere & Co., IPR2019-01052, Paper 19 at 10 (PTAB Jan. 7, 2020) (finding that the stay of the parallel district court case rendered moot the patent owner’s argument for discretionary denial of the petition). Therefore, we decline to exercise our discretion to deny institution on the basis of the Underlying Litigations.” slip op. at 17
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Applying those standards, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing unpatentability of at least one challenged claim of the ’706 patent. We institute review on all challenged claims and on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Relying on the declaration testimony of Dr. Galitsky, Petitioner asserts that a person of ordinary skill in the art “would have had at least a bachelor’s degree in computer science or computer engineering and at least 2 years of experience with speech-recognition and natural-language-processing technology.” Pet. 5 (citing Ex. 1002 ¶ 94). Petitioner also asserts that the ordinarily skilled artisan “would also have a general knowledge of fast-food ordering processes.” Id. At this stage, Patent Owner does not propose an alternative assessment. Based on the present record including the disclosure in the ʼ706 patent, we apply Petitioner’s definition of the level of ordinary skill in the art (see Pet. 5) with the exception of the open-ended phrases “at least,” which expand the ranges of education and experience indefinitely without an upper bound. We determine this level of skill comports with the qualifications a person would have needed to understand and implement the teachings of the ʼ706 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (noting that the prior art itself may reflect an appropriate level of skill in the art).” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,592,706 - PTAB · Jul 19, 2023 · IPR2023-00422 · APJ Scott Raevsky · IPR · Institution
The Board instituted review of claims 1–20 on all petitioned grounds, finding a reasonable likelihood that claim 1 is anticipated by Foss.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’301 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’301 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“In inter partes review, we construe a claim using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. § 282(b), including construing the claim in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b). Petitioner does not propose any claim constructions. See Pet. 12. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims.” slip op. at 5
Claim construction§ 102 anticipationcites KSR · GrahamPatents in suitUS 8,905,301 - PTAB · Jul 19, 2023 · IPR2023-00421 · APJ Scott Raevsky · IPR · Institution
The Board instituted IPR on claims 1–17 under all asserted grounds: anticipation by Gopinathan and obviousness over Gopinathan and Hirka.
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 it is determined that there is a reasonable likelihood that the petitioner would prevail with respect to at least one of the claims challenged in the petition. After considering Petitioner’s arguments and evidence, and for the reasons set forth below, we determine that Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’100 patent. Accordingly, we institute an inter partes review with respect to all challenged claims and grounds asserted in the Petition. 37 C.F.R. § 42.108(a) (2022).” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“a POSITA [person of ordinary skill in the art] would have a bachelor’s degree in computer science, computer engineering, data science, electrical engineering, or a related study, and would have at least one or two years of experience with payment processing systems, credit card and debit card payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 11–12 (citing Ex. 1003 ¶¶ 159–161). We are persuaded, on the present record, that Petitioner’s proposal is generally consistent with the problems and solutions in the ’100 patent and prior art of record. We note, however, that the open-ended language “at least” expands the range of experience indefinitely with no upper bound. For purposes of this Decision, we adopt Petitioner’s definition of the level of skill with the exception of the language “at least.”” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededDecided for patent owner
“Petitioner does not propose any claim constructions. See Pet. 11. As no terms are in dispute, we determine that no terms require construction at this stage. See Realtime Data, LLC v. Iancu, 912 F.3d 1368 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 7
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“To show anticipation under 35 U.S.C. § 102, each and every claim element, arranged as in the claim, must be found in a single prior art reference. Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). The prior art need not, however, use the same words as the claims. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The anticipation inquiry takes into account the literal teachings of the prior art reference and inferences the ordinarily skilled person would draw from it. Eli Lilly and Co. v. Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr., 849 F.3d 1073, 1074–75 (Fed. Cir. 2017).” slip op. at 5
Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 7,837,100 - PTAB · Jun 23, 2023 · IPR2023-00406 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenge and joined Micron as a petitioner in IPR2022-00996, with the grounds unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and any preliminary response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00996 (“996 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 996 IPR, Papers 1, 10. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 996 IPR. Petitioner represents that Samsung, the petitioner in the 996 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion. The statute governing inter partes review joinder states the following: JOINDER.—If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the Director, after receiving a preliminary response under section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter parties review under section 314.” slip op. at 2
NonePatents in suitUS 11,016,918 - PTAB · Jun 23, 2023 · IPR2023-00405 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review on the petition’s challenges and granted Micron’s motion to join IPR2022-00999, with its grounds and schedule unchanged.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“instituted in IPR2022-00999 (“999 IPR”) based on a petition filed by Samsung Electronics Co., Ltd. (“Samsung”). 999 IPR, Papers 1, 11. In this proceeding, Micron Technology, Inc., Micron Semiconductor Products, Inc., and Micron Technology Texas LLC (collectively “Petitioner”) concurrently filed a Petition (Paper 1) and a Motion for Joinder (Paper 3) seeking to be joined as a petitioner in the 999 IPR. Petitioner represents that Samsung, the petitioner in the 999 IPR, does not oppose joinder. Motion 2. Patent Owner did not file an opposition to the Motion.” slip op. at 2
NonePatents in suitUS 11,232,054 - PTAB · Jun 7, 2023 · IPR2023-00203 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of claim 16 on the petition’s challenges and joined Micron as a petitioner in IPR2022-00615 after finding a reasonable likelihood of success over Ellsberry.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination. As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 615 IPR.” slip op. at 13
- BurdenNot reached
“As discussed above, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the Ellsberry obviousness ground. We also determine that the Petition “warrants the institution of an inter parties review under section 314,” as set forth in 35 U.S.C. § 315(c). Because Petitioner seeks to join the 615 IPR and has satisfied the requirement of 35 U.S.C. § 315(c) to file a petition that warrants institution, we do not reach Patent Owner’s remaining arguments with respect to the grounds based on Perego-422 and the Perego-422 and Amidi combination.” slip op. at 13
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“described with reference to Table 1 refer to transmitting a command signal to one of the multiple memory devices in the selected rank.” Prelim. Resp. 8. On this record, we disagree with Patent Owner’s interpretation of this passage. The ’912 patent states that Table 1 is a logic table “for the selection among ranks of memory devices 30 using chip-select signals.” Ex. 1001, 7:56–58. We see nothing in Table 1 that indicates a further selection of memory devices within each rank. On this record, and for purposes of institution, we agree with Petitioner that the ’912 patent’s description of sending the command signal “to only one memory device or the other memory device” by reference to logic showing the selection of one rank or another tends to show that a rank may have one memory device. See Pet. 12–13. At least for this preliminary decision, we determine that “rank” refers to “one or more memory devices.” We do not construe the term further at this time. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017). The parties are not precluded from arguing the proposed construction of “rank” in subsequent briefing at trial. Our final claim construction, if any, will be determined on the full record at trial.” slip op. at 6
Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurePatents in suitUS 7,619,912 - PTAB · Jun 7, 2023 · IPR2023-00204 · APJ Jon M Jurgovan · IPR · Institution
The Board instituted review of claims 1–35 on the § 103(a) Ellsberry and Halbert ground and granted Micron’s motion to join IPR2022-00639.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the the petition.” The patentability challenges in the 639 IPR met the “reasonable likelihood” standard of § 314(a). 639 IPR, Paper 15 at 37. Petitioner represents that the Petition “is substantively identical to” the petition in the 639 IPR. Motion 1. Petitioner presents the following ground in this Petition, which is identical to the instituted ground in the 639 IPR:” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“As discussed above, Petitioner’s Motion is unopposed by Samsung and Patent Owner. We have reviewed the Motion, and we determine that it is appropriate under these circumstances to join Petitioner as a party to the 639 IPR.” slip op. at 3
NonePatents in suitUS 10,949,339 - PTAB · Apr 13, 2023 · IPR2022-01547 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–7 and all petitioned grounds, finding a reasonable likelihood of success on at least claims 1, 2, and 4–7 over Loomis and Hodge.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). For the reasons given below, on this record, Petitioner has established a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the Challenged Claims. Accordingly, we institute an inter partes review of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Lett’s testimony, proposes that a person of ordinary skill in the art at the time of the invention “would have been a person with a working knowledge of cache memory technologies.” Pet. 10 (citing Ex. 1003 ¶ 427). Petitioner contends that a person of ordinary skill in the art “would have had a Bachelor of Science degree in an academic discipline emphasizing the design of electrical, computer, or software technologies, in combination with experience with memory management technologies such as caching. Superior education or experience would compensate for deficiencies in either.” Id. at 10–11 (citing Ex. 1003 ¶ 42). Patent Owner states that “[f]or the purposes of this Preliminary Response only, Patent Owner utilizes Petitioner’s proposed level of skill in the art.” Prelim. Resp. 13. At this stage of the proceeding and on the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the level of ordinary skill in the art reflected by the ’244 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978). Therefore, we adopt Petitioner’s level of ordinary skill in the art in our consideration of the issues presently before us.” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Additionally, only terms that are in controversy need to be construed, and these need be construed only to the extent necessary to resolve the controversy. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). Petitioner and Patent Owner agree that no claim terms require an express construction at this stage of the proceeding.8 Pet. 11; Prelim. 8 During a conference call and as documented in a joint email thereafter, (1) Petitioner acknowledged an error in the Petition, where it states that four claim elements should be construed instead of stating that no terms require construction and (2) Patent Owner agreed that Petitioner’s clarification mooted an argument raised on page 13 of the Preliminary Response regarding the error in the Petition. See Ex. 3001 (Email from D. Smith dated Feb. 17, 2023). Resp. 13. Accordingly, we need not construe any claim terms expressly because none are in dispute. See Vivid Techs., 200 F.3d at 803.” slip op. at 15
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“Whether an ordinarily skilled artisan would have been motivated to modify the teachings of a reference is a question of fact.” WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. Cir. 2016) (citations omitted). “[W]here a party argues a skilled artisan would have been motivated to combine references, it must show the artisan ‘would have had a reasonable expectation of success from doing so.’” Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d 1350, 1360–61 (Fed. Cir. 2017) (quoting In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1154, 1068–69 (Fed. Cir. 2012)). slip op. at 17
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,313,244
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.