- PTAB · Jun 11, 2024 · IPR2024-00245 · APJ Nathan A Engels · IPR · Institution
The Board instituted IPR on claims 1–4 on all asserted grounds, finding a reasonable likelihood that Samsung would show at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Institution of an inter partes review is authorized by statute when “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration of the evidence currently of record, we conclude that the information presented shows that there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one challenged claim of the ’150 Patent.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“DISCRETIONARY DENIAL Patent Owner argues that we should exercise our discretion to deny the Petition based on the parallel district court litigation. Prelim. Resp. 35 (citing Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 6 (PTAB Mar. 20, 2020) (precedential)). Petitioner, however, presented a Sotera stipulation.7 Pet. 88 (citing Ex. 1023). Thus, we do not exercise our discretion to deny institution here. See Katherine K. Vidal, Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with 7 See Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 at 19 (PTAB Dec. 1, 2020) (precedential). Parallel District Court Litigation (June 21, 2022) (“Consistent with [Sotera], the PTAB will not discretionarily deny institution in view of parallel district court litigation where a petitioner presents a stipulation not to pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”).8” slip op. at 14
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionOther
“Petitioner states that (i) “coded multi-view video signal,” recited in each of the challenged claims, “encompasses a coded video signal for two or more viewpoints, including at least one base viewpoint and at least one nonbase viewpoint” (Pet. 7), and (ii) “picture signal,” also recited in each of the challenged claims, “refers to a signal that represents at least one picture from a viewpoint” (Pet. 9). Petitioner also identifies four elements of claim 1 that Petitioner contends are means-plus-function claim elements under 35 U.S.C. § 112 ¶ 6 (pre-AIA). Patent Owner states that for the purposes of its Preliminary Response, Patent Owner “does not dispute Petitioner’s proposed constructions . . . , including terms that it contends are subject to 35 U.S.C. § 112(6).” Prelim. Resp. 10. At this stage, we apply the parties’ agreed-upon constructions for the purposes of this Decision.” slip op. at 7
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“and DTS are provided in optional fields of packetized elementary stream packets. Ex. 1005, 7:19–25. Further, “[t]he video DTS . . . indicates the time when the picture needs to be decoded by the STD” (Ex. 1005, 7:47– 49), and on the current record, we understand Petitioner to cite the DTS parameters encoded in the transport stream for enhancement layer pictures as teaching the claimed coded information representing a desired delay time. Pet. 33. Among other examples, Petitioner (Pet. 34) and Dr. Reader (Ex. 1005 ¶ 201) cite Chen-736’s example of the formula DTSEi = DTSLi +1.5F, where F is a time interval based on the frame rate (Ex. 1005, 8:9–20), as indicating that DTSEi represents the start of decoding of the ith picture in the enhancement layer being delayed 1.5F relative to the start of decoding of the ith picture frame of the base layer. Pet. 36 (citing Ex. 1003 ¶ 201); see Pet. 35–40 (citing additional examples of serial and parallel decoding with similar DTS calculations). At this stage, we find Petitioner’s position that the claim’s recitation that the coded information must “represent” the desired delay time to be a reasonable reading of the plain language of the claim such that a DTS value can represent the desired delay time even if it requires calculation. Pet. 35 n.8. Even if Chen-736’s use of F-based offsets as time intervals “is different than the concept of a desired delay between decoding” and Chen-736 recognizes the distinction between PTS and DTS (Prelim. Resp. 14–15), on the current record, these arguments do not rebut Petitioner’s mapping of Chen-736 to the claim language. Similarly, Patent Owner’s argument that Chen-736 teaches a DTS for all picture signals, including the base viewpoints and non-base viewpoints (Prelim. Resp. 16), does not rebut Petitioner’s mapping of Chen-736’s enhancement-layer DTS to the claim language. At this stage, on the current record we determine Petitioner has sufficiently shown that Chen-736 teaches or reasonably suggests this claim element.” slip op. at 12
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,139,150 - PTAB · May 28, 2024 · IPR2024-00085 · APJ Michael L Woods · IPR · Institution
The Board instituted IPR on claims 1, 2, 4, 5, 7–11, 13, and 15 on all asserted grounds, finding a reasonable likelihood that at least one challenged claim is unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a), we have authority to institute an inter partes review if “the information presented in the petition . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). After considering the Petition, the Preliminary Response, the Preliminary Reply, the Preliminary Sur-reply, and the evidence of record, we determine the information presented shows a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of the Challenged Claims of the ’659 patent. Accordingly, we institute an inter partes review of the Challenged Claims on the grounds asserted in the Petition.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree with Patent Owner. 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.”8 The Director’s Memorandum explains that, when a petitioner makes a Sotera-type stipulation, “it mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB” and “[w]ith such a stipulation, if an IPR or PGR is instituted, the grounds the PTAB resolves will differ from those present in 8 https://www.uspto.gov/sites/default/files/documents/interim_proc_discretio nary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf (“Director’s Memorandum”). the parallel district court litigation.” Director’s Memorandum 7 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Pursuant to the Director’s Memorandum, we “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.” Id. Because Petitioner provides a Sotera-type stipulation, we do not exercise our discretion to deny institution under Fintiv.” slip op. at 8
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Upon review of the prior art of record and the parties’ arguments, we adopt Patent Owner’s definition of the person of ordinary skill in the art for purposes of this Decision as it appears consistent with the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (holding that the prior art itself can reflect the appropriate level of ordinary skill in the art). Petitioner’s proposed definition appears overly restrictive, as it requires a graduate degree in a narrow field of engineering or equivalent experience. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’659 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 19. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We disagree with Patent Owner’s claim construction. By using the word “or,” the plain and ordinary meaning of “prone, kneeling, or standing” is that only one must be satisfied to meet the claim. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Furthermore, and although claims are read in light of the specification, limitations in a specification are not read into a claim. In re van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Even if the Specification describes embodiments in which the user can begin in a prone position and then transition to a kneeling or standing position, as Patent Owner points out (see Prelim. Resp. 20), the claim does not recite the term “transitioning,” and we do not read the terms “each of” or “substantially flat surface” into this claim limitation. For example, the claim does not recite a “substantially flat” top surface and Patent Owner’s attempt to infer this structure into the claim is not supported under the law. See id. at 29–30. For purposes of this Decision, we agree with Petitioner and construe “prone, kneeling, or standing” in accordance with its plain and ordinary meaning as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 12
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · KSRPatents in suitUS 9,586,659 - PTAB · May 28, 2024 · IPR2024-00086 · APJ Kevin W Cherry · IPR · Institution
The Board instituted IPR on claims 1, 2, 5-8, 10-15, 17, 18, 20, and 21 on all asserted grounds after finding a reasonable likelihood of success and declining Fintiv denial.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion never shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in an inter partes review). slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner
“1. “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position” With respect to the claim term “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” Patent Owner points to passages of the Specification, arguing that all three positions are possible. Prelim. Resp. 19–21 (citing Ex. 1001, Abstr., 4:13–17, 4:33–40; Ex. 2006 ¶ 18). We do not agree with Patent’s Owner proposed construction because even if the Specification discloses that all three positions are possible, that is not what the plain language of the claim requires. Claim 1 recites “or,” which means that a user can be disposed on the top surface of the flotation device in any one of the three positions. See, e.g., SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187, 1199 (Fed. Cir. 2013) (“The disjunctive ‘or’ plainly designates that a series describes alternatives.”). Patent Owner does not identify any definition or disclaimer that would modify this plain meaning. See Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). Thus, we agree with Petitioner and apply the plain and ordinary meaning of the phrase “wherein a user can be disposed on the top surface of the flotation device in a prone, kneeling, or standing position,” to construe “prone, kneeling, or standing” as alternatives, and the prior art need only show one to satisfy this aspect of the claim.” slip op. at 13
- Skill levelSkill level patent owner adoptedDecided for patent owner
“Neither party explains how or why its particular proposal impacts the issues before us in this proceeding. We find that a bachelor’s degree with the accompanying experience proposed by Patent Owner more closely aligns with the prior art of record and the ’044 patent. We note, however, there is some overlap in the proposed levels of ordinary skill in the art because Patent Owner’s proposal includes “at least” a bachelor’s degree, which would encompass Petitioner’s master’s degree as well. Prelim. Resp. 10. Nonetheless, our determination herein would be the same under either party’s definition.” slip op. at 12
- Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityPrinted publication establishedInstituted
“As the Board has held in a precedential decision, “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent and therefore that there is a reasonable likelihood that it qualifies as a printed publication.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential).” slip op. at 23
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 9,359,044 - Samsung Electronics Co., Ltd. v. Advanced Coding Technologies, LLCInstitution deniedPTAB · May 23, 2024 · IPR2024-00062 · APJ Nathan A Engels · IPR · Institution
The Board denied institution because Petitioner did not show that the prior art disclosed or taught the construed “emphasis level” limitation in any challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“which the amplitude of the high frequency components of the video signal is increased,” as required by the construction of “emphasis level.”7 See Prelim. Resp. 9 (“the Petition’s analysis of the claim limitations containing these terms against the cited references does not indicate that those references disclose these limitations under Petitioner’s proposed constructions in the District Court Action”). Thus, without Petitioner mapping the constructions to the prior art in a clear and identifiable way, we determine the Petition itself does not satisfy Petitioner’s burden. See 37 C.F.R. §§ 42.104(b)(3)– (4).” slip op. at 6
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“the terms “emphasis processing” and “emphasis level.” In the Petition, Petitioner states that no constructions are necessary (Pet. 2), but after filing 2 US 5,491,514; issued Feb. 13, 1996. Ex. 1005. 3 US 5,241,387; issued Aug. 31, 1993. Ex. 1006. 4 US 6,801,665 B1; published Sept. 30, 1999. Ex. 1007. the Petition, Petitioner proposed constructions of those terms in the parties’ district-court litigation, stating that: (i) the claim term “emphasis processing” means “increasing the amplitude of the high frequency components of a video signal;” and (ii) the claim term “emphasis level” means “a value that represents the amount by which the amplitude of the high frequency components of the video signal is increased.” Ex. 2003, 10– 11. After Patent Owner relied on those constructions in its Preliminary Response (see, e.g., Prelim. Resp. 8–10),5 Petitioner requested (Ex. 3001), and the Board authorized (Paper 8), additional briefing to address how the analysis in the Petition applies under those constructions.6 Because we determine Petitioner’s showings with respect to those constructions are inadequate to carry Petitioner’s burden, our discussion below focuses primarily on those aspects of the parties’ briefing.” slip op. at 4
- PTAB / AIA Trials › Discretionary denialNot reached
“Discretionary Denial Because we determine Petitioner has not carried its burden on the merits, we do not reach the parties’ arguments relating to discretionary denial. See Pet. 98–99; Prelim. Resp. 26–32.” slip op. at 11
Claim constructionDiscretionary denialPatents in suitUS 6,845,128 - Mediatek Inc. v. Parkervision, Inc.InstitutedPTAB · May 23, 2024 · IPR2024-00150 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR of claims 1–5 on all four asserted obviousness grounds, finding a reasonable likelihood of success on the Gibson and Schiltz combination.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“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_discretion ary_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. 1025) 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 Western District of Texas Litigation.” slip op. at 14
- BurdenDecided for petitioner
“We disagree. The Petition is clear that it presents alternative challenges where Goldberg, Thacker, ITU-T J.83, and/or AAPA are added to the combination of Gibson and Schiltz or are added to Crols, if the term “cable modem,” recited in the preamble of claim 1, is determined to be limiting. Pet. 6–7. In the context presented here, “and/or” clearly means one or more of the four additional references. And Petitioner’s reliance on one or more of the additional references is clear in the context of the issues before us based on Petitioner’s analysis of the preamble of claim 1, where Petitioner clearly states, “[a]nd to the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Gibson (as modified by Schiltz, discussed below) as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA.” Pet. 42 (Ground 1); see id. at 66–67 (similarly asserting, in the context of Ground 2, that, “[t]o the extent that the preamble is limiting and requires a ‘cable modem,’ it would have been obvious to use the modem of Crols as a cable modem, in view of Thacker, Goldberg, ITU-T J.83, and/or AAPA”). Petitioner also includes a discussion as to why one of ordinary skill in the art would have been motivated to “use the modems of Gibson modified with Schiltz (Ground 1), and Crols (Ground 2), as ‘cable modems,’ in view of the DOCSIS References (Thacker and Goldberg), ITU-T J.83, and AAPA,” and would have had a reasonable expectation of success in so doing. Id. at 37–40. Thus, we do not agree with Patent Owner that the Petition lacks particularity and we find that the Petition clearly sets forth the alternative combinations discussed above such that Patent Owner has a fair opportunity to respond.” slip op. at 7
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“l. Summary as to Claim 1 For the reasons discussed above, on the present record we find that Petitioner has established that the combination of Gibson and Schiltz teaches each of the elements of claim 1 and that one of ordinary skill in the art would have been motivated to combine the teachings of these two references as proposed by Petitioner with a reasonable expectation of success in so doing.” slip op. at 40
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner’s proposed level of ordinary skill in the art is identical to the level of skill that we found applicable in the final written decision in the TCL IPR. See IPR2021-00985, Paper 44 at 13. We see no reason to deviate from our previous finding, which is now further supported by Dr. Larson’s testimony. See Ex. 1003 ¶ 26. Accordingly, at this stage of the proceeding and on the present record, we adopt Petitioner’s proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’835 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 16
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,292,835 - PTAB · Apr 22, 2024 · IPR2024-00015 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–14 over all petitioned grounds, finding a reasonable likelihood of prevailing and declining to deny institution under §325(d).
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“institute review. The standard for instituting an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that an inter partes review may not be instituted unless the information presented in the Petition and the Preliminary Response shows “there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons explained below, we institute an inter partes review of all challenged claims on all grounds raised in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundOther
“subject matter. Pet. 40–42. As noted above, Petitioner argues that Cheng discloses that frame 20 supports touch panel 10 using support 50. Pet. 40 (citing Ex. 1004, Fig. 1; Ex. 1002 ¶ 142). Petitioner relies on Han for teaching the parabolic curvature that is recited in limitation f, and Petitioner relies on Zhao for teaching a process that induces curvature during installation of the panel. See Pet. 27 (“[I]t would have been obvious for a [person of ordinary skill in the art] to combine the touch screen display device and frame elements of Cheng, with the parabolically curved touch screen elements of Han and the curvature-inducing frame elements of Zhao.” (citing Ex. 1002 ¶ 118)).” slip op. at 8
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDecided for petitioner
“2. Advanced Bionics Part Two In the second part of the Advanced Bionics framework, we consider Becton, Dickinson factors (c), (e), and (f) to determine whether the Office erred in a manner material to the patentability of the challenged claims. Advanced Bionics, Paper 6 at 10. Factor (c) focuses on the record developed by the Office in previously reviewing the art or arguments. It informs, therefore, the petitioner’s showing under factors (e) and (f), which focus on the petitioner’s evidence of previous Office error regardless of the context in which the same or substantially the same art or arguments were previously presented. For example, if the record of the Office’s previous consideration of the art is not well developed or silent, then a petitioner may show the Office erred by overlooking something persuasive under factors (e) and (f). On the other hand, if the alleged error is a disagreement with a specific finding of record by the Office, then ordinarily the petitioner’s required showing of material error must overcome persuasively that specific finding of record. Advanced Bionics, Paper 6 at 10–11. For the reasons explained below, we find that Petitioner has shown the Office erred.” slip op. at 18
- Skill levelSkill level petitioner adoptedOther
“had “at least a bachelor-of-science or comparable degree in mechanical engineering or an equivalent discipline and at least five years of experience designing touch sensors, provided that the educational level can offset the experience level, and vice versa.” Pet. 18 (citing Ex. 1002 ¶¶ 23–24). Patent Owner does not comment on the level of ordinary skill in the Preliminary Response. To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, which appears consistent with the ’935 patent and the asserted prior art, except that we delete the qualifier “at least.”” slip op. at 5
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 10,775,935 - PTAB · Apr 22, 2024 · IPR2024-00014 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–5, finding a reasonable likelihood that claims 1–5 are obvious over Cheng, Han, and Zhao.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons stated below, we determine that Petitioner has established a reasonable likelihood that it would prevail with respect to at least one claim, and we institute inter partes review as to all of the challenged claims of the ’335 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundOther
“limitation, where it would have been obvious for a person of ordinary skill in the art “to modify Cheng’s plate to incorporate Han’s parabolic touch screen curvature along Ax and Ay directions to improve touch detection accuracy.” Pet. 46 (citing Ex. 1033 ¶ 165). Petitioner contends that it would have been obvious to modify Cheng’s frame with Zhao’s curved mounting surfaces and frame, which would induce curvature into the plate. Id. at 47–48 (citing Ex. 1004, Fig. 1; Ex. 1005, Fig. 2; Ex. 1012, Fig. 1; Ex. 1033 ¶¶ 166–167). Petitioner argues that “Cheng’s modified curved plate touch surface would be curved relative to a flat plane defined in part by the short and long edges of frame 20.” Id. at 50. Petitioner asserts that “[a] flat plane would be defined (at least in part) by Cheng’s modified curved edges,” as shown in annotated Figure 1 of Zhao, reproduced below. Id.” slip op. at 14
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“the “focus” of factor (c) and “informs” the petitioner’s showing under factors (e) and (f). As to factor (c), Petitioner asserts, and the record shows, Han, Cao, Shin, and Zhao were only listed or cited to in IDSs and were not addressed in any Office Actions. See Ex. 1032. Further, as Petitioner notes, there were 810 total references, and these references were cited in a single IDS containing 129 additional references. Id. at 76–82; Ex. 1031, code (56). Petitioner further points out that the record reflects that the Examiner only initialed the IDSs, which contained these many references, and did not issue Office Actions, which is sufficient to demonstrate that there is no evidence that the asserted art was substantively evaluated during examination. See Pet. Prelim Reply 3–5. As Advanced Bionics recognizes, a showing of material error varies depending on the degree to which the previously-presented art was substantively addressed by the Office. Advanced Bionics at 10–11. Turning to factor (e), as Petitioner notes, the record is silent as to how the Examiner viewed the prior art listed in IDSs which is asserted here. We recognize that it is difficult to characterize error in a silent record. In this light, we find that Petitioner’s assertion that the Examiner failed to adequately consider the references, which should have resulted in an Office Action because the references clearly disclose the ’335 patent claimed subject matter, serves as sufficient identification of error under factor (e). Pet. Prelim. Reply 5. Moreover, as discussed above and relevant to factor (f), the evidence presented in the Petition is meritorious, which further demonstrates that the combination of the cited prior art was overlooked during prosecution. Accordingly, under the second part of the Advanced Bionics framework, we decline to exercise our discretion to deny institution of trial under § 325(d).” slip op. at 25
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt the assessment offered by Petitioner, except for the inclusion of “at least,” because that articulation is consistent with the ’335 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,335 - PTAB · Apr 22, 2024 · IPR2024-00013 · APJ Sheila F Mcshane · IPR · Institution
The Board instituted IPR on claims 1–15, finding a reasonable likelihood that claims 1 and 2, 5–7, and 9–15 are obvious over Chen ’975 and Klein.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“partes review. See 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), we may not authorize an inter partes review unless the information in the petition and the preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.”” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“At this juncture, we do not find support for Petitioner’s proposed interpretation of the plain meaning of the term “sealing element” to include a carve-out of “protection from some, but not necessarily all, dirt, water and other contaminants.” First, we discount Petitioner’s reliance on Patent Owner’s contentions in a related litigation for this interpretation—the claim term in the litigation is for a different patent and relates to a different term. See Ex. 1011, 71. Second, Petitioner’s references to the ’338 patent Specification for the support of this interpretation are directed to sealing window 126, and in the cited descriptions of it, we do not discern any support for the limited view that the protection provided is only from “from some” contaminants. Ex. 1001, 8:12–19, 16:27–34, 16:61–66 (cited in Pet. 42). Instead, the Specification states that “sealing window 126 provides sealing” and “[t]his means sealing window 126 prevents ingress of dirt, water and other contaminants into the interior of the touch sensing apparatus 100.” Ex. 1001, 16:30–33 (emphasis added). This description appears to be consistent with the ordinary meaning of “seal.” For instance, “seal” is defined in the Oxford English Dictionary10 as “means of preventing the passage of gas or liquid into or out of something, esp. at a place where two surfaces meet.” Ex. 3001, 6.d. Accordingly, on this preliminary record, we decline to adopt Petitioner’s proposed carve-out for the ordinary meaning of the term; instead, for the purposes of this decision we use of the ordinary meaning of the term “sealing element” as an element to provide sealing (preventing the passage of contaminants). The parties are invited to provide additional briefing on this issue during trial.” slip op. at 19
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner argues that a person of ordinary skill in the art would have been motivated to use Klein’s optical overlay 10 in the touch display of Chen ’975 for several reasons. Pet. 33 (citing Ex. 1003 ¶ 77). Petitioner asserts that Chen ’975 does not disclose the effectiveness of filter strip 44 as a barrier to contaminants and that the reference provides only minimal details on how to implement filter strip 44. Id. (citing Ex. 1005 ¶ 39). Petitioner contends that a person of ordinary skill in the art would look to Klein, which discloses more details on optical overlay 10, including suitable materials. Id. (citing Ex. 1003 ¶ 77). Specifically, Petitioner points to how Klein discloses features of mounting and assembly and discloses how the optical overlay 10 functions in a way that “[s]ignals from the transmitters 34 may be collimated by the lens 42 of the outer wall 16 on one side of the overlay 10 and focused onto a receiver 36 by the lens 42 on the opposite side of the overlay 10.” Id. at 34 (citing Ex. 1006, 3:37–39, 7:34–38). Petitioner contends that these implementation details are missing from Chen ’975 and that a person of ordinary skill in the would have therefore been motivated to implement Chen ’975’s filter strip 44 using the optical overlay 10 disclosed in Klein. Id. When discussing groove and gasket use in Klein, Petitioner asserts that person of ordinary skill in the art “would have been motivated to implement Chen ’975’s filter strip 44 with the features of Klein’s optical overlay 10 to achieve this ‘sealing or weatherproofing.’” Pet. 35 (citing Ex. 1003 ¶ 81). Petitioner argues that a person of ordinary skill in the art would have recognized that this sealing/weatherproofing would have advantageously enabled Chen ’975’s filter strip 44 to provide “a more robust system that would last longer and/or require less maintenance (e.g., putting in new emitters/detectors when the old ones break)”; “usability in less hospitable environments that may have more contaminants (e.g., outdoors)”; “better performance (e.g., detectors/emitters operating at peak performance without contaminants”; and “the ability to collimate the light from the emitters and focus to at the detectors.” Id. at 35–36.” slip op. at 22
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“[a] two-part framework: (1) whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of first part of the framework is satisfied, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (PTAB Feb. 13, 2020) (precedential) (“Advanced Bionics”); see also Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 at 17–18 (PTAB Dec. 15, 2017) (precedential as to Section III.C.5, first paragraph) (listing factors to consider in evaluating the applicability of § 325(d)) (“Becton, Dickinson”). The non-exclusive factors set forth in Becton, Dickinson “provide useful insight into how to apply the framework” of Advanced Bionics under § 325(d). Advanced Bionics at 9. Those non-exclusive factors include: (a) the similarities and material differences between the asserted art and the prior art involved during examination; (b) the cumulative nature of the asserted art and the prior art evaluated during examination; (c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection; (d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments. Becton, Dickinson at 17–18. “If, after review of factors (a), (b), and (d), it is determined that the same or substantially the same art or arguments previously were presented to the Office, then factors (c), (e), and (f) relate to whether the petitioner has demonstrated a material error by the Office.” Advanced Bionics at 10.” slip op. at 30
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,281,338 - Netflix Inc. v. Divx, LLCAll claims unpatentablePTAB · Apr 17, 2024 · IPR2020-00646 · APJ Iftikhar Ahmed · IPR · Remand
On remand, the Board held claims 1, 5, 8, 9, 13–15, 18, and 21–23 unpatentable as obvious over Zetts and Kaku, with claims 5, 18, and 21 also obvious over Zetts, Kaku, and Seo.
RulingsRemand decision- RemandDecided for petitioner
“the Federal Circuit. Paper 49. On September 11, 2023, the Federal Circuit issued a decision in the appeal vacating our Final Written Decision and remanding for further proceedings consistent with its decision. Netflix, 80 F.4th at 1362. The Federal Circuit determined that we abused our discretion in finding that Petitioner had failed to articulate a field of endeavor. Id. at 1359. The Federal Circuit remanded to allow us to decide the “factual question of whether Kaku is directed to the same field of endeavor as the patent-in-suit.” Id. at 1361. The Federal Circuit, however, did not address the other three issues raised by Patent Owner since we did not decide those issues in the Final Written Decision and they were not presented for appeal. See generally Netflix.” slip op. at 3
- Skill levelSkill level board ownOther
“B. Level of Ordinary Skill in the Art In the Final Written Decision, we stated the following:” slip op. at 10
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner
“Petitioner has not shown that one of the prior art references is analogous to the claimed invention.” Final Dec. 9. On remand, the construction of this claim is an issue that must be decided to reach a conclusion on the patentability of the Challenged Claims of the ’792 patent.” slip op. at 12
- Obviousness (§103) › Analogous artAnalogous artDecided for petitioner
“1. Analogous Art – Field of Endeavor Before turning to Petitioner’s analysis of the claims, we address” slip op. at 29
Patent outcomesUS 8,472,792 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 8,472,792 - Askeladden L.L.C. v. Kioba Processing LLCAll claims unpatentablePTAB · Mar 25, 2024 · IPR2023-00147 · APJ Josiah C Cocks · IPR · Final written decision
Claims 8–22 are unpatentable as anticipated by Lauper or obvious over Lauper, ISO 7816-4, and ISO 14443; claim 23 is obvious over Lauper and Fu, with or without the ISO standards.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner presents the following assessment as to the level of skill in the art: 7 Neither party presents any objective indicia of non-obviousness. As Mr. Zatkovich explains, for purposes of the ’792 Patent, a POSITA[8] 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 point-of-sale and payment processing systems, credit card and smartcard payment transactions, and industry practices and standards for processing purchase transactions and authenticating participants. Pet. 15–16 (citing Ex. 1002 ¶¶ 101–103; Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)). We adopt Petitioner’s proposal as reasonable and consistent with the prior art. See Okajima 261 F.3d at 1355 (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“C. Claim Construction We construe claims “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) (2020); see also Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). Petitioner offers claims construction for the following terms: “transaction controller” (claims 8–23); “smartcard chip” (claims 8, 9); “said processor” (claims 10, 14, 25); “mobile user interface device” (claims 8–11, 13, 15, 16, 18, 21). Pet. 11–15. For purposes of instituting trial, we adopted Petitioner’s proposed constructions for the above-noted terms. Inst. 8 Person of ordinary skill in the art. Dec. 10–12. Patent Owner has offered no challenges to any of those claim constructions as a part of this proceeding. After reviewing the record, we adopt Petitioner’s proposed constructions. See Ex. 1001, 31:39–54; Ex. 1002 ¶¶ 79–100; Pet. 12–15. For convenience, we reproduce them in table format below:” slip op. at 10
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“We have considered the record and determine that Petitioner’s proposed grounds of unpatentability based on (1) Lauper alone, and, (2) Lauper, ISO 7816–4, and ISO 14443, find ample evidentiary support in the disclosures of the prior art. In particular, we are satisfied that Petitioner demonstrates that claims 8–22 are anticipated by Lauper and also rendered obvious based on Lauper, ISO 7816–4, and ISO 14443. See Pet. 16–64. We also credit Mr. Zatkovich’s unrefuted testimony offered in support of those proposed grounds of unpatentability. See, e.g., Ex. 1002 ¶¶ 318–456. For the foregoing reasons, we determine that Petitioner has shown that all the limitations of claims 8–22 are accounted for by either Lauper alone, or, alternatively, by Lauper taken with ISO 7816–4 and ISO 14443. We also determine that Petitioner has set forth adequate reason to combine the teachings of the prior art, with a reasonable likelihood of success in combining those teachings. Accordingly, we conclude that Petitioner has established by a preponderance of the evidence that claims 8–22 are unpatentable.” slip op. at 17
Patent outcomesUS 7,110,792 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,110,792
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.