- PTAB · Nov 21, 2023 · IPR2023-01164 · APJ James P Calve · IPR · Institution
The Board instituted IPR on claims 1–20 because Peloton showed a reasonable likelihood of prevailing on claims 1, 2–7, and 10–20 over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022) (“The Board institutes the trial on behalf of the Director.”). 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.” 35 U.S.C. § 314(a). Upon consideration of the evidence and arguments in the record, we determine that the information presented shows a reasonable likelihood that Petitioner would prevail with respect to at least one of the challenged claims. We therefore grant institution of an inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“degree in an exercise related field or mechanical or electrical engineering and (ii) three to five years of industry experience in designing cardiovascular exercise equipment (such as treadmills, bicycles, steppers, ellipticals) or in a similar field” Pet. 16 (citing Ex. 1002 ¶¶ 31–34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. On the present record, we find that Petitioner’s uncontested level of ordinary skill in the art is consistent with the ’375 patent and the prior art of record. Therefore, we adopt Petitioner’s level of ordinary skill in the art, as articulated above, in our consideration of the issues presently before us.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions and asserts that” slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“such as treadmills that detect a user’s presence on the treadmill and present the user’s exercise data on a display while the user is exercising to provide a number of similar benefits including motivating a user to exercise. Pet. 16– 17 (citing Ex. 1006 ¶¶ 5, 26, 35, Abstr.; Ex. 1004, 5:41–48, 8:22–26, 11:56– 61, 13:20–30, Abstr.). Petitioner contends that a skilled artisan would have been motivated to combine the complementary teachings of Morris and Ray that addressed these similar objectives to achieve predictable results. Id. at 16–17 (citing Ex. 1002 ¶¶ 137–140). Petitioner asserts that a skilled artisan would have incorporated Ray’s camera and software instructions to validate a user’s exercise data into Morris’ treadmill with a reasonable expectation of success because Morris expressly taught that “its exercise equipment could be fitted with optical sensor(s).” Id. at 17 (citing Ex. 1006 ¶ 33).” slip op. at 15
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,796,375 - PTAB · Nov 21, 2023 · IPR2023-01163 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board instituted review of claims 1–20 on all asserted grounds after finding a reasonable likelihood that claims 1–9, 12, and 14–20 would have been obvious over Morris and Ray.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“record, Petitioner has shown sufficiently that Morris and Ray, in combination, teach or suggest each element of independent claim 1. Petitioner has also sufficiently shown that one of ordinary skill in the art would have been motivated to combine the teachings of Morris and Ray as proposed and would have had a reasonable expectation of success in doing so. Accordingly, we determine that Petitioner has shown a reasonable likelihood that it would prevail in establishing that the subject matter of claim 1 would have been obvious over Morris and Ray.” slip op. at 21
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“have been motivated to combine Morris and Ray by adding several of Ray’s features to Morris’ treadmill, including Ray’s camera, its functionality of displaying a motivational image, and its ability to transmit exercise data to a remote location, and that the ordinarily skilled artisan would have had a reasonable expectation of success in achieving the combination proposed. Pet. 16–18. Petitioner asserts that an ordinarily skilled artisan would have been motivated to combine Morris and Ray because they provide complementary teachings and address similar objectives. Pet. 16 (citing Ex. 1004, Abstr., 5:41–48, 8:22–26, 11:56–61, 13:20–30; Ex. 1006 ¶¶ 6, 25, 33, 35, Abstr.; Ex. 1002 ¶¶ 135–138). Petitioner also asserts that Morris contemplates use of an optical sensor, provides exercise data and “a human analog display that mimic[s] the user’s bouncing motion,” and includes a signal processing and display system with the necessary capabilities to implement the combination. Id. at 16–17 (citing Ex. 1002 ¶¶ 139–143; Ex. 1006 ¶¶ 32–36, 50, 56–58, claims 29–37, Figs. 6, 11–12C). Petitioner further asserts that Ray expressly teaches that “its user validation and motivation technology could be ‘easily and affordably merged’ into a treadmill.” Id. at 18 (quoting Ex. 1004, 9:55–57) (citing Ex. 1002 ¶¶ 143–144). Finally, Petitioner contends that an ordinarily skilled artisan would have been motivated to make the proposed combination because it would have improved Morris’ the user as the intensity and duration of exercise increased” and Ray’s ability to share exercise data with a remote location. Id. (citing Ex. 1004, 7:11–22, 11:55–59, 13:50–57; Ex. 1006 ¶ 50; Ex. 1002 ¶¶ 138, 145); see also id. at 16 (arguing user motivation would have motivated the combination) (citing Ex. 1004, 8:22–26, 11:56–61; Ex. 1006 ¶ 25). At this stage, we are persuaded that Petitioner has made a sufficient showing that one of ordinary skill in the art would have been motivated to combine Morris and Ray with a reasonable expectation of success.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any express claim constructions and states that the “claims . . . have not been construed by any courts as of the filing of th[e] Petition.” Pet. 15 (citing Ex. 1002 ¶¶ 29–30). At this stage, Patent Owner does not address the construction of any term or phrase. We determine that it is not necessary to expressly construe any claim terms or phrases for purposes of this Decision. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to 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 8
- Skill levelSkill level petitioner adoptedDecided for petitioner
“steppers, ellipticals) or in a similar field.” Pet. 15 (citing Ex. 1002 ¶¶ 31– 34). Petitioner also asserts that a person could qualify as an ordinarily skilled artisan with less education but more experience or less experience but more education. Id. At this stage, Patent Owner does not address the level of ordinary skill in the art. At this stage of the proceeding and on this record, we adopt Petitioner’s proposed level of skill, as articulated above. We are satisfied that it comports with the level of skill necessary to understand and implement the teachings of the ’227 patent.” slip op. at 8
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,032,227 - PTAB · Nov 13, 2023 · IPR2023-00796 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4, 7–10, and 18–22 on all petitioned grounds, finding a reasonable likelihood of unpatentability based on the asserted combinations.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“Patent Owner’s Preliminary Response asks the Board to exercise its discretion to deny institution under 35 U.S.C. § 314 in view of parallel litigation. Prelim. Resp. 1–10. However, “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.” Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation (June 21, 2022), available at https://www.uspto.gov/sites/default/files/documents/ interim_proc_discretionary_denials_aia_parallel_district_court_litigation_m emo_20220621_.pdf. Petitioner made such a stipulation. Pet. 71. Hence, we decline to exercise our discretion under § 314 to deny institution in view of parallel litigation.” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“At this stage, we determine it is unnecessary to construe any terms, but we encourage the parties to directly address issues of claim construction in future briefing. 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 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“Petitioner argues a person of ordinary skill would have been motivated to incorporate the functionality of Fulton’s rotator in Williams’s digital array processor for several reasons. Pet. 40–44; see Pet. 36–38. Among other things, Petitioner contends Williams and Fulton describe similar devices and “a [person of ordinary skill in the art] would have had a reasonable expectation of success in making the proposed combination due to the similarities in their function and architecture.” Pet. 41. f) Preliminary Conclusion Regarding Claim 1 On the current record, Petitioner has sufficiently shown for the purposes of institution that portions of Williams and Fulton teach or reasonably suggest each limitation of claim 1. Patent Owner will have an opportunity to address Petitioner’s showings during the trial stage, but on the current record, we preliminarily determine that Petitioner has shown a reasonable likelihood that it will prevail in its challenge to claim 1 as unpatentable in view of the combined teachings of Williams and Fulton.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 7,260,141 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 24, 2023 · IPR2022-00721 · APJ George R Hoskins · IPR · Final written decision
Claims 1–6, 8–19, 21–33, 35–43, 45–50, and 52–62 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the Tarrant and Bell ground.
RulingsFinal written decision- Skill levelSkill level board ownDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner’s witness, Dr. Dickens, opines that a person having ordinary” slip op. at 13
- BurdenUnpatentable
“(viii) Weighing of Evidence and Conclusion as to Obviousness Youtsey anticipates the claimed invention except that its sealing” slip op. at 97
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(6) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 90
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“For these reasons, Patent Owner’s first objective indicia argument is” slip op. at 95
Patent outcomesUS 9,225,083 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 9,225,083 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00719 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–5, 8–15, and 18 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the alternative Tarrant and Bell ground.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“in that neither party proposes constructions for any specific claim terms. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, based on our review of the complete record, we maintain and reaffirm that no explicit construction of any claim term is needed to resolve the issues presented by the parties and resolved in this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 13
- Skill levelOther
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Dickens’ testimony, proposes that a” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner
“(f) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
“For these reasons, Patent Owner’s first objective indicia argument is unavailing. Petitioner’s Patent Application Patent Owner argues that Petitioner, in its own U.S. Patent Application No. 13/530,831 (see Ex. 2013, “the ’831 Application”) filed several years after the ’983 patent’s priority date, took positions contrary to and belying Petitioner’s positions in this proceeding. See PO Resp. 2, 71–73. In particular, according to Patent Owner, the ’831 Application “included claims directed to the same coupler-body grounding member/path limitations at issue here,” demonstrating that “five of Petitioner’s own inventors (i.e., [persons of ordinary skill in the art]) understood that a coupler-body grounding member/path was patentable.” Id. (citing Ex. 2013, code (57), Figs. 4, 5, ¶¶ 3, 5, 14, 18, claim 1; Ex. 2014, 4:6–14; Ex. 2015, 3– 6; Ex. 2016, 2); PO Sur-reply 3; Ex. 2001 ¶¶ 190–199. Patent Owner cites Andersen Corp. v. Pella Corp., 300 F. App’x 893, 899–900 (Fed. Cir. 2008), as “finding statements made in the accused infringer’s own patent applications provided objective evidence that the challenged claims were not obvious.” PO Resp. 73. Petitioner in reply points out that the original claims of the ’831 Application were rejected by the Examiner, and the claims were not allowed until they were amended “to require the grounding member to be ‘exposed outside of the connector body,’ supporting that other features attribute to the non-obviousness of [Petitioner’s] claimed invention.” Pet. Reply 19–20; see Ex. 2014, 3:35–4:15 (issued claim 1 from the ’831 Application). Petitioner distinguishes the Andersen decision cited by Patent Owner as involving “long-felt need, the failure of others, unexpected results, copying, and praise by others,” none of which are present here. Pet. Reply 20. Patent Owner replies that the Examiner’s rejection in the ’831 Application “fails to change the fact that Petitioner’s own inventors thought that the original claims were nonobvious.” PO Sur-reply 3. Patent Owner additionally notes that the “rejection was based on a parent patent to the ’983 [p]atent,” which Patent Owner argues “confirm[s] that Petitioner’s inventors were trying to patent the same claimed invention believing it to be patentable.” Id. (citing Ex. 2015, 4–5).” slip op. at 94
Patent outcomesUS 10,446,983 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,446,983 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00718 · APJ Bart A Gerstenblith · IPR · Final written decision
Claims 1–6, 10–17, 20, and 21 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the Tarrant and Bell ground.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“G. Level of Ordinary Skill in the Art Petitioner, supported by Dr. Dickens’ testimony, proposes that a” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“in that neither party proposes constructions for any specific claim terms. See generally PO Resp.; Pet. Reply; PO Sur-reply. Accordingly, based on our review of the complete record, we maintain and reaffirm that no explicit construction of any claim term is needed to resolve the issues presented by the parties and resolved in this Decision. See Realtime Data, 912 F.3d at 1375.” slip op. at 14
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusDecided for petitioner
Patent outcomesUS 10,965,063 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,965,063 - Amphenol Corp. v. PPC Broadband, Inc.All claims unpatentablePTAB · Oct 23, 2023 · IPR2022-00720 · APJ George R Hoskins · IPR · Final written decision
Claims 29–33, 36–43, and 46 are unpatentable as obvious over Youtsey, Lionetto, and Horak; the Board did not reach the Tarrant and Bell ground.
RulingsFinal written decision- Skill levelSkill level patent owner adoptedDecided for patent owner
“B. Level of Ordinary Skill in the Art Petitioner’s witness, Dr. Dickens, opines that a person having ordinary skill in the art pertaining to the ’284 patent would have had either: (1) “a bachelor’s degree in mechanical or electrical engineering, or a related field, and three to four years of industry experience”; or (2) “a master’s degree in mechanical or electrical engineering, or a related field, and one to two years of industry experience.” Pet. 9; Ex. 1005 ¶ 11; Ex. 1026 ¶ 270. Dr. Dickens adds that this person “also would have been familiar with coaxial cables and connectors and/or the components and underlying technology used therein.” Pet. 9; Ex. 1005 ¶ 11. Patent Owner’s witness, Dr. Eldering, opines that a person of ordinary skill in the art would have had “at least a bachelor’s degree in engineering and several years of experience in the cable and telecommunications industry relating to the design, manufacture, or utilization of coaxial cable connectors in communications systems.” Ex. 2001 ¶ 27; Ex. 2042 ¶ 213. Dr. Eldering further opines that “[b]achelor’s degrees in engineering require basic coursework in physics and mechanics, and experience in the cable and telecommunications industry will result in use of the knowledge obtained in those courses as applied to particular engineering problems which occur with coaxial cable connectors.” Ex. 2001 ¶ 27. Dr. Eldering also states that “[a]lthough [his] definition of a [person of ordinary skill in the art] differs slightly from that offered by Dr. Dickens, adoption of [Dr. Dickens’] definition would not change any of the analysis or opinions offered” by Dr. Eldering. Id. ¶ 29. In the Institution Decision, we concluded that the differences in the levels of ordinary skill in the art proposed by Drs. Dickens and Eldering are insubstantial and do not impact the analysis of the issues presented. See Inst. Dec. 25–26. Patent Owner agrees with that conclusion. See PO Resp. 15. Petitioner does not address this issue in its post-institution briefing.” slip op. at 13
- Expert testimonyOther
“proposed both for maintaining electrical continuity across the structure, and for excluding from the interior of the device such contaminates as moisture and dust.” Ex. 2035, 2:4–21 (emphases added). Bunyan describes various structural configurations for such gaskets (see id. at 2:22–30), and then discusses how such gaskets “exhibit a number of problems in actual use” (id. at 2:31–45) such that “it is frequently the case that gaskets providing satisfactory EMI shielding capabilities are unable to provide environmental sealing, thereby causing corrosion problems” (id. at 2:46–51). “As a result, the EMI shielding and environmental sealing functions have typically been seen as two separate functions requiring two separate products.” Id. at 2:51–60. Bunyan accordingly provides “an EMI gasket having both enhanced resistance to corrosion and a reduction in the compressive forces required to form a seal between adjacent surfaces in circumstances where both sealing and EMI shielding are required.” Id. at 5:3–10 (emphasis added); see also id. at Figs. 3–4, 5:51–63, 6:16–54, 7:4–12 (Bunyan’s gasket comprises a rod-shaped conductive elastomeric polymer 5 having rib sections 6, and a non-conductive polymer gel 7 disposed between the ribs to provide sealing). Thus, although Bunyan recognizes there are challenges in designing a gasket to provide both an environmental seal and a conductive pathway, there are ways to overcome these challenges. 11 Bunyan may not be prior art to the ’284 patent. See Ex. 1001, code (63); Ex. 2035, code (60). Patent Owner nonetheless argues Bunyan supports its arguments here, so we address it accordingly.” slip op. at 70
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable
“(6) Analysis and Conclusion as to Motivation to Modify Youtsey Having considered and balanced the prior art for all that it teaches,” slip op. at 89
- Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia no nexusNot shown unpatentable
“For these reasons, Patent Owner’s first objective indicia argument is” slip op. at 94
Patent outcomesUS 10,038,284 unpatentable§ 103 obviousnesscites KSR · GrahamPatents in suitUS 10,038,284 - PTAB · Oct 18, 2023 · IPR2023-00673 · APJ William V Saindon · IPR · Institution
The Board instituted inter partes review of claims 1–4, 7–14, 16, 17, 21, and 22 on all asserted grounds, finding a reasonable likelihood that claim 1 is obvious over Pham and Wu.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“based on the related district court matters identified above. Prelim. Resp. 1– 12; see Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 11–12 (PTAB Mar. 20, 2020) (precedential) (holding that PTAB has discretion to deny institution in certain circumstances where there are parallel district court proceedings). Our analysis under Fintiv is guided by the USPTO Director’s Memorandum issued on June 21, 2022, titled “Interim Procedure for Discretionary Denials in AIA Post Grant Proceedings with Parallel District Court Litigation” (“Director’s Memo”). Pursuant to the Director’s Memo, we “will not discretionarily deny institution . . . where a petitioner presents a [Sotera] stipulation.” Director’s Memo at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)). Because Petitioner has offered a stipulation like in Sotera, i.e., to “not pursue in the co-pending district court litigation the specific ground asserted in the petition, or any other ground that was raised or could have been reasonably raised in an IPR (i.e., grounds that could have been raised under §§ 102 or 103 on the basis of prior art patent or printed publications)” (Paper 8, Appendix A at 2), we do not discretionarily deny institution under Fintiv.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Reviewing Petitioner’s analysis of claim 1, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. The three remaining grounds are also based on a similar combination of Pham and Wu, and add one or more references to address features in dependent claims. As mentioned above, Patent Owner has not argued the merits of the case at this time. IV. CONCLUSION For the reasons given above, we determine that Petitioner has established a reasonable likelihood of success in showing that claim 1 would have been obvious in view of Pham and Wu. Accordingly, we institute inter partes review on all challenged claims and grounds. 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.”).” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“B. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have a Bachelor’s degree in computer science, computer engineering, or a related discipline, and 3–4 years of experience in computer networking with an emphasis on packet processing systems including traffic monitoring, inspection, and encryption/decryption systems. More experience could compensate for less formal education and vice versa. Pet. 14–15. Patent Owner did not offer a level of ordinary skill in the art in its preliminary response. We adopt Petitioner’s definition for purposes of this Decision, which appears consistent with the level of disclosure provided in the ’436 patent and the prior art cited.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction Neither party offers any claim constructions, nor do we see a need to construe any terms in order to make this Decision. 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 8
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,685,436 - PTAB · Oct 2, 2023 · IPR2023-00568 · APJ Patrick R Scanlon · IPR · Institution
The Board instituted IPR on claims 1–4, 8–15, 19, and 20, finding a reasonable likelihood that at least one claim is unpatentable over the asserted grounds.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that the combination of IMU and Okabe teaches each of the limitations of claim 1. We further determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of IMU and Okabe in the manner asserted by Petitioner, with a reasonable expectation of success. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is unpatentable over the combination of IMU and Okabe.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundInstituted
“determine that the information presented sufficiently supports, for purposes of institution, Petitioner’s assertions that the combination of IMU and Okabe teaches each of the limitations of claim 1. We further determine that Petitioner provides an adequate reason why one of ordinary skill in the art would have combined the teachings of IMU and Okabe in the manner asserted by Petitioner, with a reasonable expectation of success. We therefore determine Petitioner has met its burden to show a reasonable likelihood it would prevail in demonstrating that claim 1 is unpatentable over the combination of IMU and Okabe.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5 (citing Ex. 1002 ¶¶ 23–24). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior slip op. at 8
Claim construction§ 103 obviousnesscites GrahamPatents in suitUS 11,182,641 - Lightricks Ltd. v. Plotagraph, Inc. And Sascha ConnellyInstitution deniedPTAB · Oct 2, 2023 · IPR2023-00569 · APJ Patrick R Scanlon · IPR · Institution
The Board denied institution on all challenged claims because Petitioner did not show a reasonable likelihood of prevailing on any asserted AEM, IMU-Okabe, or IMU-Okabe-Li ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We have authority to determine whether to institute an inter partes review. See 35 U.S.C. § 314 (2018); 37 C.F.R. § 42.4(a) (2022). To institute an inter partes review, we must determine that the information presented in the Petition shows “a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we determine that Petitioner has not demonstrated a reasonable likelihood that it would prevail with respect to at least one challenged claim. Accordingly, we do not institute an inter partes review of any challenged claim on any asserted ground.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner contends that a person having ordinary skill in the art “would have had at least a bachelor’s degree in computer science, electrical engineering, or a related field, and at least one 1–2 years of experience in image processing and animation,” and “[l]ess education could have been compensated with more experience, and vice versa.” Pet. 5–6 (citing Ex. 1002 ¶¶ 27–29). Petitioner adds that one of ordinary skill in the art “would have also been familiar with existing systems for image processing and animation and understood how to implement such systems.” Id. at 6 (citing Ex. 1002 ¶¶ 27–29). Patent Owner does not address the level of ordinary skill in the art in its Preliminary Response. Based on our review of the record before us, we determine that Petitioner’s stated level of ordinary skill in the art is reasonable because it appears consistent with the evidence of record, including the asserted prior art. Accordingly, for the purposes of this Decision, we adopt Petitioner’s definition.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner contends that all claim terms should be given their plain and ordinary meaning at this stage of the proceeding. Pet. 8 (citing Ex. 1002 ¶ 46). Patent Owner indicates that it proposes “construction for certain claim language below,” but it does not actually identify any claim language for construction, let alone provide any constructions. Prelim. Resp. 16–17. On the present record, we do not discern a need to construe explicitly any claim language because doing so would have no effect on our analyses below of Petitioner’s asserted grounds and will not assist in resolving the present controversy between the parties. See Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms that . . . are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable
“First, the disclosure of AEM that Petitioner relies on for teaching selecting certain pixels to be transparent or nontransparent pertains to “compositing,” i.e., creating a composite image from multiple images. Ex. 1003, 315–16. AEM states specifically: “To create a composite from multiple images, you can make parts of one or more of the images transparent so that other images can show through.” Id. at 315. Thus, each pixel in the composite image is either transparent or nontransparent such that every pixel is “selected” under Petitioner’s usage of the term “selecting.” The possibility that some of these pixels, in theory, could extend along a non-linear motion path of a Deform pin is mere happenstance—we are not directed to any disclosure in AEM of actually selecting a set of pixels (either transparent or nontransparent) that extend along a non-linear motion path. See In re Facebook, Inc., 743 F. App’x. 998, 1001–02 (Fed Cir. 2018) (deciding that an example in a prior art reference showing that it is possible for image elements to be contiguous is not sufficient to teach a claim limitation that requires contiguity). We are not persuaded on the record before us that AEM’s disclosure of designating pixels as transparent or nontransparent satisfies selecting a first set of pixels extending along a non-linear pathway.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnesscites GrahamPatents in suitUS 11,301,119
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.