- Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · Aug 8, 2023 · IPR2023-00542 · APJ Scott Raevsky · IPR · Institution
Instituted inter partes review of claims 1–7, 9, and 10 on all asserted grounds; the Board found a reasonable likelihood that Marek and Skarine render at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Turning to our analysis, we note at the outset that General Plastic is inapplicable here because Petitioner filed parallel, not serial, petitions. See General Plastic, Paper 19 at 10 (“Applying these factors to the follow-on petitions, we conclude that the circumstances do not warrant institution of inter partes reviews.” (emphasis added)). Although our discretion to institute under 35 U.S.C. § 314(a) is at issue, the more appropriate inquiry here is explained in the Trial Practice Guide as follows: Parallel Petitions Challenging the Same Patent. Based on the Board’s experience, one petition should be sufficient to challenge the claims of a patent in most situations. Two or more petitions filed against the same patent at or about the same time (e.g., before the first preliminary response by the patent owner) may place a substantial and unnecessary burden on the Board and the patent owner and could raise fairness, timing, and efficiency concerns. See 35 U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not necessary in the vast majority of cases. To date, a substantial majority of patents have been challenged with a single petition. Nonetheless, the Board recognizes that there may be circumstances in which more than one petition may be necessary, including, for example, when the patent owner has asserted a large number of claims in litigation or when there is a dispute about priority date requiring arguments under multiple prior art references. In such cases two petitions by a petitioner may be needed, although this should be rare. CTPG 59. The Trial Practice Guide further states that when submitting parallel petitions, Petitioner should submit a notice ranking petitions along with a succinct explanation of their differences, why the issues addressed by those differences are material, and why the Board should exercise its discretion to institute additional petitions. Id. at 60. Patent Owner’s preliminary responses in this and the ’543 petition argue for discretionary denial of the respective petition in light of the other petition having been filed. Patent Owner does not argue that both petitions should be discretionarily denied. Having considered the issue in both petitions and based on Petitioner’s ranking, we decline to exercise our discretion to deny institution of this Petition. Accordingly, we consider this Petition on the merits and decide whether to discretionarily deny the second ranked ’543 petition based on the arguments presented in that proceeding.” slip op. at 9
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“At this stage, Petitioner’s reasons for combining Marek and Skarine are sufficiently persuasive for institution. For instance, we agree with Petitioner, on this record, that “a POSITA would have been motivated to pursue this implementation because doing so enables the mobile device to be used to carry out ‘voice communications,’ e.g., phone calls or voicemail, which was conventional mobile device functionality.” Pet. 15. We further agree with Petitioner, at this stage, that this implementation would merely be “the application of known techniques (e.g., a speaker and microphone communicatively connected to a mobile device processor) by a known system (e.g., Marek’s untrusted host mobile device) to yield predictable results (e.g., a mobile device with conventional audio capabilities).” Id. at 16. Patent Owner’s arguments are unavailing at this stage. Although Patent Owner is correct that the challenged claims do not recite an “audio interface,” Petitioner applies Skarine’s speaker and microphone disclosure to the claimed “non-secure human/machine interface.” Pet. 14, 57. Patent Owner does not dispute that a speaker and microphone constitute a non-secure human/machine interface, and on this record, we agree with Petitioner that they do. Thus, Patent Owner’s first contention that the combination is improper because the claims do not recite an audio interface is inapposite because on this record, Skarine’s audio interface discloses the claimed non-secure human/machine interface. Patent Owner’s second contention, that there is no motivation to combine because “Marek already teaches wireless communications with a Secure Computing Module interfaced with an untrusted PDA” is also unavailing on this record. See Prelim. Resp. 11. On this preliminary record, we determine that Marek’s wireless communications disclosure does not undermine Petitioner’s rationale to combine Skarine’s speaker and microphone with Marek. See Pet. 14. Patent Owner provides no explanation for this argument. See Prelim. Resp. 11. Accordingly, on this record, Petitioner’s rationale to combine is” slip op. at 20
- Skill levelSkill level petitioner adoptedDecided for petitioner
“understanding of a person of ordinary skill in the art at the time of the invention. Graham, 383 U.S. at 13, 17. Petitioner asserts that a person of ordinary skill in the art . . . (“POSITA”) would have been a person with a Bachelor’s degree in electrical engineering, computer science, computer engineering, or a related field, and at least two years of work experience with computer architecture and system security, including cryptography. Greater education or greater experience could compensate for a deficiency in either of these criteria. Pet. 4 (citing Ex. 1003 ¶¶ 17–18). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’399 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“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). The parties do not propose any claim constructions. Pet. 4–5; see generally Prelim. Resp. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,765,399 - Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · Jun 9, 2023 · IPR2023-00151 · APJ Sheila F Mcshane · IPR · Institution
Instituted review of claims 1–34 on all petition grounds; the Board found a reasonable likelihood that Apple would prevail on the Rofheart, Raphaeli, and Godfrey obviousness ground.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We have considered Patent Owner’s argument in light of the Fintiv factors, and we decline to exercise our discretion to deny the Petition. Of relevance is that the related district court litigation has been stayed. Accordingly, because a stay “allays concerns about inefficiency and duplication of efforts,” factors 1 and 2 strongly weigh against the exercise of discretion. Fintiv at 6; see also Snap, Inc. v. SRK Technology, LLC, Case No. IPR2020-00820, Paper 15, 9–11 (PTAB Oct. 21, 2020 (precedential as to § II.A)). As to factor 3, fact discovery had only commenced, but is now stayed, and briefing on a motion to dismiss and claim construction had been submitted, but no orders have been issued by the district court. Pet. 80; Prelim. Resp. iv, vii; Pet. Prelim. Resp. Reply 2. As such, we agree with Petitioner that the litigation is in its early stages, and this weighs against the exercise of our discretion. Pet. 80; Pet. Prelim. Resp. Reply 2.” slip op. at 8
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art: would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of systems/networks, including ranging/positioning systems or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 4–5 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not provide any proposed qualifications for a person of ordinary skill in the art. See generally Prelim. Resp. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’779 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner refers to claim construction positions taken for the term “known device latency” in the district court litigation, but contends that neither parties’ interpretation has any bearing on this proceeding. Pet. 2–3. Petitioner asserts that no express constructions are required in this proceeding. Id. at 2. Patent Owner does not present any proposed claim constructions. See generally Prelim. Resp. We determine that we need not expressly construe any claim terms at this juncture. 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 10
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“At this juncture, we do not find Patent Owner’s arguments persuasive. Petitioner explains that a person of ordinary skill in the art “would have contemplated conducting multiple of Rofheart’s ranging message exchanges, determining corresponding delays, and averaging those delays as taught by Raphaeli” for several reasons, including that Raphaeli discloses that its averaging method would enhance and increase the precision of the round trip delay determination. Pet. 54–57. At this juncture, we find that Petition, along with the supporting testimony of Dr. Ding (Ex. 1003 ¶¶ 255–263) provide adequate explanation of the combination of the prior art as well as why a person of ordinary skill in the art would be motivated to make that combination. Additionally, in Petitioner’s Rofheart-Raphaeli combination, there are multiple determinations of propagation delays, and even with averaging, the range would still be “based upon” “a plurality of determined propagation delays,” as claimed. As to Patent Owner’s allegation that Rolfheart requires no additional improvement in its resolution, even if Rofheart has good performance under certain operational conditions, Raphaeli offers additional improvement.” slip op. at 20
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,110,779 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · May 15, 2023 · PGR2022-00061 · APJ Thomas L Giannetti · PGR · Institution
Instituted PGR on claims 1–34 on all petitioned grounds; the Board found a reasonable likelihood that claims 1–34 are obvious over Mithyantha and claim 31 over Mithyantha with RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner
“the patent is based on matters previously presented to the Office. Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019- 01469, Paper 6 at 7 (PTAB Feb. 13, 2020). The starting point in this analysis is the two-part framework set forth in Advanced Bionics: (1) determining whether the same or substantially the same art previously was presented to the Office or whether the same or substantially the same arguments previously were presented to the Office; and (2) if either condition of the first part of the framework is satisfied, determining whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8. The first inquiry in the Advanced Bionics framework asks 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, Paper 6 at 8–9. Petitioner does not dispute that the Mithyantha and RFC 2616 references were previously presented to the Office in an IDS (Information Disclosure Statement), but were not applied by the Examiner. Pet. 9–10. Thus, Patent Owner shows that the first criterion of the Advanced Bionics framework is met as to those two references. Advanced Bionics, Paper 6 at 7–8 (“Previously presented art includes art made of record by the Examiner and art provided to the Office by an applicant, such as on an Information Disclosure Statement (IDS).”).” slip op. at 9
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Decided for petitioner
“Finally, we address Patent Owner’s claim of harassment by Petitioner. Prelim. Resp. 2–3. As Petitioner points out, the Petition here is the only petition challenging the ’953 patent. Pet. 10. That Petitioner has challenged other patents of Patent Owner, both in district court proceedings and in the PTO, is a response to Patent Owner’s active multi-patent litigation program, and for that reason does not persuade us to deny this Petition, which is directed to a different patent. For the foregoing reasons, we deny Patent Owner’s request that we exercise our discretion to deny the Petition.” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’953 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“For the purposes of this Decision, we adopt Petitioner’s proposed level of ordinary skill in the art, with the exclusion of the qualifier “at least” because it introduces ambiguity. We determine that Petitioner’s definition is consistent with the prior art of record and the skill reflected in the specification of the ’953 patent based on our review of the record.” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 11,349,953 - Apple Inc. v. Speir Technologies Ltd.InstitutedPTAB · May 15, 2023 · IPR2022-01512 · APJ Scott Raevsky · IPR · Institution
Instituted review of claims 1–25 on all asserted grounds; the Board found a reasonable likelihood that Rofheart and Raphaeli rendered the challenged claims obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Turning to our analysis, the General Plastic factors here favor institution. We find Factor 3 to be most significant here. Petitioner filed this Petition before the preliminary response and institution decision in the Unified IPR, which resolves any concerns regarding “shifts in the prior art asserted and the related arguments in follow-on petitions.” General Plastic, Paper 19 at 17. For similar reasons, we also find Petitioner’s delay in filing to be reasonable under Factors 4 and 5. We also find it less significant that 8 Petitioner notes that it “moved for joinder to the Unified [IPR] if, and only if, this Petition is denied.” Reply 5 n.1. one of the several references Apple relies on here is related by priority to one of the references Unified relies on in the Unified IPR. Further, under Factors 6 and 7, the expenditure of additional Board resources in this case is reasonable in light of Petitioner’s expeditious filing and due to some overlap in arguments in these cases. In view of the weight of these factors, we need not reach whether Apple and Unified have a significant relationship because even assuming (without deciding) that Factors 1 and 2 weigh against institution as Patent Owner contends, all of the other factors weigh in favor of institution. We therefore decline to exercise our discretion to deny institution under 35 U.S.C. § 314(a).9” slip op. at 9
- 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 the parties’ arguments and evidence, and for the reasons set forth below, Petitioner demonstrates a reasonable likelihood of prevailing with respect to at least one of the challenged claims of the ’777 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 adoptedOther
“a person of ordinary skill in the art (“POSITA”) would have had a Bachelor’s degree in electrical engineering, computer engineering, computer science, or a related field, and 2–3 years of experience in design or development of wireless communication systems/networks including ranging/positioning systems, or the equivalent. Additional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education. Pet. 7 (citing Ex. 1003 ¶¶ 20–22). Patent Owner does not dispute Petitioner’s proposed level of skill in the art at this stage. We are persuaded, on the present record, that Petitioner’s proposal is consistent with the problems and solutions in the ’777 patent and prior art of record. We adopt Petitioner’s definition of the level of skill for the purposes of this Decision.” slip op. at 11
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner does not propose any claim constructions but notes that in the district court, it has construed the term “known device latency” as “predetermined latency for the given device type of the target wireless communication device.” Pet. 3–4. Petitioner does not appear to rely on this construction in its arguments, and Patent Owner does not dispute this construction. Patent Owner proposes construing “estimating a range . . . based upon . . . a plurality of determined propagation delays” in claim 1 to require that “the range to the target device be estimated not solely based upon a single determined propagation delay, but rather upon a plurality of determined propagation delays.” PO Resp. 21–22. Although Patent Owner proposes this construction, Patent Owner does not rely on it to distinguish the prior art. See id. at 24–25. 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 12
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 7,321,777 - PTAB · Apr 12, 2023 · IPR2022-01428 · APJ Daniel J Galligan · IPR · Institution
Instituted IPR of claims 1–34 on all grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.” slip op. at 7
- 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
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“For the reasons explained below in section II.E.3.a, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing under the district court’s construction and also under that construction as interpreted by Patent Owner. Because the constructions advocated by Patent Owner do not impact the decision whether to institute, we need not resolve this claim construction issue at this time. 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))). 2. “Chip Select Signals,” ”Chip Select Conduits” Claims 6, 11–14, 16–19, and 29–34 recite “chip select signals” or “chip select conduits.” Patent Owner argues that the district court construed the term “chip select signals” and associated “chip select conduits” to “exclude[] situations in which a chip select signal could enable multiple array dies at once” and contends that we should adopt this construction. Prelim. Resp. 23–24 (citing Ex. 2004, 33–34). For the reasons explained below in section II.E.6, we determine that Petitioner has demonstrated a and, therefore, we need not further address this claim construction at this time.” slip op. at 11
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 20 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner, with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 8,787,060 - PTAB · Apr 12, 2023 · IPR2022-01427 · APJ Daniel J Galligan · IPR · Institution
The Board instituted IPR on claims 1–20 over all grounds, finding a reasonable likelihood of prevailing on the asserted obviousness challenges.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Decided for petitioner
“the PTAB will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition. Interim Procedure 9. Here, Petitioner has filed such a stipulation, which provides the following: Samsung stipulates that, if the Patent Trial and Appeal Board institutes an IPR proceeding for U.S. Patent No. 9,318,160 on the grounds presented in Samsung’s petition in IPR2022-01427, Samsung will not pursue an invalidity defense in the Eastern District of Texas action (C.A. No. 21-463-JRG) that the patent claims subject to the instituted IPR are invalid based on grounds that were raised or reasonably could have been raised in the IPR. Ex. 1051. Thus, in light of Petitioner’s stipulation, we do not exercise discretion to deny institution under 35 U.S.C. § 314(a).” slip op. at 7
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Pet. 23. Patent Owner argues that we should apply the district court’s constructions for “array die” and “chip select signals.” Prelim. Resp. 21–25. We provide a preliminary analysis of each of these terms below. The parties may address these and any other claim construction issues during the trial, and our final decision including any claim constructions will be based on the full record developed during the trial. 1. “Array Die” The district court construed “array die” as “array die that is different from a DRAM circuit” based on an argument during prosecution of the ’060 DRAM circuits 206A–D in U.S. Patent Application Publication 2008/0025137 A1 (Ex. 1011 (“Rajan137”)). Ex. 2004, 31–32 (citing January 13, 2014 Amendment at 10); see Ex. 1002 (’060 prosecution history), 465 (January 13, 2014 Amendment at 10) (“Rajan does not disclose ‘a plurality of stacked array dies.’ Rajan merely stacks DRAM circuits 206A–D, which are different from array dies.”). Patent Owner argues that we should adopt the district court’s construction so that there is a “consistent construction” between the two proceedings. Prelim. Resp. 23–24. Patent Owner, however, qualifies its position by arguing that “the statements it made during prosecution were specific to Rajan137’s DRAM circuits 206A–D and this should be made clear to the jury through the order instead of having the expert explain it at trial.” Prelim. Resp. 24 n.4 (citing Ex. 2005 (Patent Owner’s objections to the district court claim construction order), 1–2); see Ex. 2005, 2 (“[T]he Court should make clear that the claimed array die is one that is ‘different from Rajan’s DRAM circuits 206A–D.’”). Although Patent Owner appears to walk this qualification back by arguing in its Sur-reply that it withdrew its objections to the district court claim construction (Sur-reply 1–2 (citing Exs. 2010, 2011)), Patent Owner’s position here still appears to be that the term “array die” is one that is different from DRAM circuits 206A–D of Rajan137. For example, in disputing Petitioner’s unpatentability contentions, Patent Owner argues that “the Petition contains no analysis on how or why Kim’s or Riho’s memory dies are different from Rajan137’s DRAM circuits.” Prelim. Resp. 26–27; see also Prelim. Resp. 27 (“Missing from the Petition is any analysis on why the referenced DRAM dies in Grounds 1 and 2 differ from Rajan137’s” slip op. at 9
- Skill levelSkill level petitioner adoptedDecided for petitioner
“contends that a person of ordinary skill in the art “would have had an advanced degree in electrical or computer engineering, or a related field, and two years working or studying in the field of design or development of memory systems, or a bachelor’s degree in such engineering disciplines and at least three years working in the field.” Pet. 5 (citing Ex. 1003 ¶ 60). Petitioner also asserts that “[a]dditional training can substitute for educational or research experience, and vice versa,” and Petitioner identifies particular technology with which a person of ordinary skill in the art would 7 At this stage, Patent Owner does not present any objective evidence of nonobviousness (i.e., secondary considerations) as to any of the challenged claims. Council) industry standards and DRAM (dynamic random access memory) and SDRAM (synchronous DRAM) memory modules. Pet. 5. Patent Owner does not dispute Petitioner’s proposed skill level at this time. See Prelim. Resp. 21 (“For purposes of this preliminary response only, Patent Owner applies the skill level proposed by Petitioner.”). To the extent necessary, and for purposes of this Decision, we accept the uncontested assessment offered by Petitioner with the exception of the qualifier “at least,” which introduces vagueness as to the amount of experience.” slip op. at 8
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Pet. 98–99 (citing Ex. 1016 ¶¶ 40, 45–46; Ex. 1030, 135–36; Ex. 1038, 68; Ex. 1003 ¶¶ 589–606). Petitioner argues that Riho teaches that varying impedances between TSVs that result from, for example, manufacturing processes and chip placement, should be taken into account. Pet. 99–100 (citing Ex. 1016 ¶¶ 55–56, 61); see Ex. 1016 ¶ 61 (discussing that the chip located closest to the control chip has “smaller penetrating through resistance” than a chip farther from the control chip). Petitioner contends that a person of ordinary skill “would have been motivated by Riho2 to account for these variations by selectively activating one or more drivers . . . to achieve the optimal driving strength for each ‘data conduit,’ thus saving power.” Pet. 100 (citing Ex. 1018 ¶¶ 96–97, Fig. 7A; Ex. 1017, 1:22–24, 5:11–14, Fig. 5; Ex. 1003 ¶¶ 598–603); see also Pet. 100–01 (asserting that “[o]ther contemporaneous references confirm that adjusting the driver strength to account for the position of a die in stack was well known at the time” (citing Ex. 1039, code (57), 7:46–49, Fig. 6)). 3. Patent Owner’s Arguments and Our Preliminary Analysis Patent Owner makes two arguments against Petitioner’s challenge to” slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSRPatents in suitUS 9,318,160 - Metacluster LT, Uab v. Bright Data Ltd.InstitutedPTAB · Mar 23, 2023 · PGR2022-00052 · APJ Sheila F Mcshane · PGR · Institution
Instituted PGR on claims 1–27; the Board found it more likely than not that the claims are obvious over Mithyantha, with claim 19 also challenged over Mithyantha and RFC 2616.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“We may not institute a post-grant review “unless . . . the information presented in the petition filed under section 321, if such information is not rebutted, would demonstrate that it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable.” 35 U.S.C. § 324(a). Upon consideration of the arguments and evidence, we determine Petitioner has demonstrated that it is more likely than not that at least one of the challenged claims is unpatentable. Accordingly, we institute a post-grant review of the challenged claims of the ’034 patent.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“had at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and at least two years’ experience working with and programming networked computer systems.” Pet. 13 (referencing Ex. 1002 ¶ 33).” slip op. at 8
- Prior constructionPrior construction adoptedDecided for petitioner
“The district court considered the issue of whether a client device, for instance, should be construed in a role-based or structural manner, and the evaluation included whether a device could sometimes be operated as a client and at other times could operate as something else. Ex. 1018, 48–51. In support, the district pointed the patent disclosure that: Any network element in the system may be a dedicated device that assumes only a single role, and thus being only a client (using tunnels), a tunnel, a client (using agents/ peers), an agent, or a peer device. Alternatively or in addition, a network element may be capable of assuming two or more roles, either at different times or simultaneously, from the list of roles including a client (using tunnels), a tunnel, a client (using agents/peers), an agent, or a peer device. Alternatively or in addition, a device may be capable of assuming all of the above roles. Ex. 1018, 50 (quoting ’866 patent at 125:33–42, with identical disclosure in ’034 patent (Ex. 1001, 125:24–33)).” slip op. at 10
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“At this stage of the proceedings, we do not agree that Mithyantha’s second appliance 200’/200b cannot be considered the claimed “second client device” and its first appliance 200/200a cannot be considered the claimed “third server.” As discussed supra Section II.C, we have adopted the district court’s constructions of claim terms. More specifically, the district court determined, and we concur based on the present record, that “client device” is “a device that is operating in the role of a client by requesting services, functionalities, or resources from other devices” and a “first server” functions as “a server that is not the client device.” On this record, Petitioner has demonstrated that Mithyantha’s second appliance 200’/200b functions as the claimed “second client device,” as it operates as a client by requesting services, functionalities, or resources from other devices, that is, it transmits HTTP web requests over the network to a server. See Pet. 44– 45. Mithyantha also discloses that its first appliance 200/200a functions in a server role, with appliance 200/200a sending back responses to client 102a, that is, content from the web server, and it is a separate element from a client device. See id. at 41–42. Moreover, as discussed above, Petitioner’s assertions are consistent with the role-based nature of the elements as disclosed in the ’034 patent. Further, we do not find that Petitioner’s applications of the claim elements to Mithyantha are arbitrary because they are consistent with the district court’s claim construction of the respective claimed elements and the elements’ functions and roles, as discussed. Moreover, Mithyantha discloses that its appliances can provide different functions (see e.g. Ex. 1009, 5:31–33, 8:65–67, 9:8–21, 9:53–55; 23:58–64), and may be implemented in many forms. That is, the implementation of appliance 200 is generally described as being on any form of computing device such as “computing device 100,” and “computing device 100 can be any workstation, desktop computer, laptop or notebook computer, server, handheld computer, mobile telephone.” See id. at 13:65– 142, 16:58–64. We do not agree with Patent Owner’s allegations regarding a required architecture. Patent Owner does not explain how these requirements are recited in the limitations of claims. Instead, at this juncture, it appears that the arguments are an attempt to impermissibly introduce limitations into the claim that are not recited. Similarly, we do not agree with Patent Owner’s arguments on required anonymity because this requirement is not recited in the claims.” slip op. at 18
Claim construction§ 101 eligibility§ 103 obviousnesscites Alice · Mayo · KSR · GrahamPatents in suitUS 11,272,034 - Major Data Uab v. Bright Data Ltd.InstitutedPTAB · Sep 15, 2022 · IPR2022-00916 · APJ Kevin C Trock · IPR · Institution
The Board instituted IPR of claims 1, 2, 6–11, 13, and 15–24 on all asserted grounds, finding a reasonable likelihood of prevailing and compelling evidence of unpatentability.
RulingsInstitution decision- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Pet. 2. Patent Owner expresses concern, however, that “Major Data was formed as a ‘back-up’ option to continue these IPRs,” and represents that Patent Owner “has not sued Major Data for infringement of any patents and Patent Owner is not aware of any services offered by Major Data.” Prelim. Resp. 3. In its Preliminary Reply, however, Petitioner points out that shortly before Patent Owner filed the Preliminary Response, Petitioner had advised Patent Owner and “confirmed, inter alia, that it is not affiliated with any of the Code200 parties and did not discuss the preparation or filing of IPRs with anyone apart from privileged communications with its own attorneys.” Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any another party’s behest.” Id. In its Preliminary Sur-reply, Patent Owner does not directly challenge Petitioner’s representations, but instead “reserves all rights including, e.g., vacatur and sanctions, if any contradictions to Petitioner’s representations should arise.” PO Prelim. Sur-reply 4. Based on the current record, we determine that Petitioner has established compliance with the statutory requirement under 35 U.S.C. § 312(a)(2) to identify all real parties in interest. C. The ’510 Patent” slip op. at 3
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“Neither party addresses, however, another directive of the Memorandum, which states that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds, if unrebutted at trial, would plainly lead to a conclusion that the challenged claims are unpatentable by a preponderance of the evidence. See infra Sections IV.D–I. Instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 11
- 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. We therefore institute inter partes review as to all of the challenged claims of the ’510 patent and all of the asserted grounds of unpatentability in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the art “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 16. Petitioner further asserts that a person of ordinary skill would be familiar with “the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. (citing Ex. 1005 ¶¶ 25–27). Patent Owner submits that a person of ordinary skill in the art would have “had a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 29–30 (citing Ex. 2025 ¶ 18). Patent Owner acknowledges that the parties’ respective proposed qualifications “are not materially different, at least in terms of affecting an institution decision in this IPR.” Id. at 30. For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’510 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). C. Claim Construction” slip op. at 13
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,484,510 - Major Data Uab v. Bright Data Ltd.InstitutedPTAB · Sep 15, 2022 · IPR2022-00915 · APJ Kevin C Trock · IPR · Institution
Instituted IPR on claims 1, 2, 12, 14, 15, 17–19, and 21–29 on all asserted grounds, based on compelling evidence that the challenged claims would be unpatentable if unrebutted.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)InstitutedDenied
“Memorandum, which states that “the PTAB will not rely on the Fintiv factors to discretionarily deny institution in view of parallel district court litigation where a petition presents compelling evidence of unpatentability.” Memorandum 2. The Memorandum explains that “where the PTAB determines that the information presented at the institution stage presents a compelling unpatentability challenge, that determination alone demonstrates that the PTAB should not discretionarily deny institution under Fintiv.” Memorandum, 4–5 (emphasis added). The Memorandum further explains that “[c]ompelling, meritorious challenges are those in which the evidence, if unrebutted in trial, would plainly lead to a conclusion that one or more claims are unpatentable by a preponderance of the evidence.” Memorandum 4. On the current record, we determine that Petitioner’s invalidity grounds, if unrebutted at trial, would plainly lead to a conclusion that the challenged claims are unpatentable by a preponderance of the evidence. See infra Sections IV.E–J. Instituting inter partes review under these circumstances “strikes a balance among the competing concerns of avoiding potentially conflicting outcomes, avoiding overburdening patent owners, and strengthening the patent system by eliminating patents that are not robust and reliable.” Memorandum 5. Accordingly, based upon our consideration of the evidence and arguments presented in the Petition, and pursuant to the directive in the Memorandum concerning compelling, meritorious challenges, we decline to exercise our discretion under § 314(a) to deny institution of inter partes review as Patent Owner requests.” slip op. at 12
- PTAB / AIA Trials › Real party in interest / privityRpi dispute resolved for petitionerDecided for petitioner
“Petitioner identifies Major Data UAB as the real party-in-interest. Pet. 2. Patent Owner expresses concern, however, that “Major Data was formed as a ‘back-up’ option to continue these IPRs,” and represents that Patent Owner “has not sued Major Data for infringement of any patents and Patent Owner is not aware of any services offered by Major Data.” Prelim. Resp. 3. In its Preliminary Reply, however, Petitioner points out that shortly before Patent Owner filed the Preliminary Response, Petitioner had advised Patent Owner and “confirmed, inter alia, that it is not affiliated with any of the Code200 parties and did not discuss the preparation or filing of IPRs with anyone apart from privileged communications with its own attorneys.” Pet. Prelim. Reply 3. Petitioner avers that “it did not file its IPRs at any another party’s behest.” Id. In its Preliminary Sur-reply, Patent Owner does not directly challenge Petitioner’s representations, but instead “reserves all rights including, e.g., vacatur and sanctions, if any contradictions to Petitioner’s representations should arise.” PO Prelim. Sur-reply 4. Based on the current record, we determine that Petitioner has” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“According to Petitioner, a person of ordinary skill in the pertinent art “would have at least a bachelor’s degree in Computer Science or related field (or equivalent experience), and two or more years’ experience working with and programming networked computer systems as of the Priority Date.” Pet. 16. Petitioner continues that “[s]uch a person would be familiar with the underlying principles of Web, Internet, or network communication, data transfer, and content sharing across networks, including the HTTP and TCP/IP protocols.” Id. at 16–17 (citing Teruya Decl. ¶¶ 25–27). Patent Owner submits that a person of ordinary skill in the art would have had “a Master’s Degree or higher in the field of Electrical Engineering, Computer Engineering, or Computer Science or as of that time had a Bachelor’s Degree in the same fields and two or more years of experience in Internet Communications.” Prelim. Resp. 29–30. We regard Petitioner’s more specific definition as consistent with the ’319 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (prior art itself may reflect an appropriate level of skill). Therefore, for the purpose of this decision, we adopt Petitioner’s formulation. C. Claim Construction” slip op. at 14
- Prior constructionPrior construction adoptedDecided for petitioner
“device” as a “consumer computer” was previously considered, and rejected, by the district court in the Teso Litigation. See, e.g., Ex. 1017, 10–12. In the Preliminary Response, Patent Owner takes issue with the evidence and the reasoning used by the district court to reject Patent Owner’s previously proposed construction. See, e.g., Prelim. Resp. 34–36. We have considered Patent Owner’s evidence and arguments in the Preliminary Response that the district court’s construction of the claim term “client device” as a “communication device that is operating in the role of a client” is incorrect. See Prelim. Resp. 31–49. For purposes of this decision, however, we concur with the district court’s reasoning and agree with its construction of the claim term “client device” as a “communication device that is operating in the role of a client.” This construction is consistent with, and supported by, the intrinsic evidence of the specification.” slip op. at 17
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites Phillips · GrahamPatents in suitUS 10,257,319 - PTAB · Sep 1, 2022 · IPR2022-00418 · APJ Kara L Szpondowski · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood that claims 1–17 and 19–30 are unpatentable over Best, Bonella, and Mills.
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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 17
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Under the circumstances in this case, we disagree with Patent Owner’s arguments. When different petitioners challenge the same patent, the relationship between those petitioners may be considered when weighing the General Plastic factors. Valve, Paper 11 at 9. Here, there is no evidence in the record that Petitioner has any significant relationship with the petitioners of the three prior IPRs challenging the ’833 patent—for example, that Petitioner is a co-defendant with any of the other three petitioners or was accused of infringing the ’833 patent based on the same product. See Valve, Paper 11 at 10. For this reason, we find that factor 1 does not weigh in favor of exercising our discretion to deny institution. It is, however, undisputed that the full record of the prior IPR proceedings against the ’833 patent and the Hynix ’831 IPR were available when the Petition was filed. Accordingly, the timing raises the potential for abuse because Petitioner had ample opportunity to study the arguments raised by Patent Owner, and the Board’s findings and conclusions of law regarding the claims of the ’833 patent, as well as the claims of the related ’831 patent. However, here, there is no indication in the record that Petitioner specifically waited to file the Petition in a strategic move to gain any sort of advantage. That is, it does not appear that the Petition was filed with any consideration of the timing of the prior IPR proceedings, because Petitioner did not file the Petition until over three years after the prior IPRs concluded, and only after being sued for infringement of the ’833 patent by Patent Owner. See Pet. 64. That Petitioner apparently may have reviewed and considered strategies undertaken by prior petitioners on similar issues does not, in and of itself, constitute unfairness to Patent Owner or create a relationship with any of the prior petitioners. This is unlike a situation where a petitioner purposely waited in order to learn from prior petitioners’ mistakes or success. Although Patent Owner contends that institution was denied in other non-precedential Board decisions alleged to be similar (see Prelim. Resp. 12–16), we find that argument unavailing because “[e]ach case is decided on the basis of its own facts, and the Board’s consideration of the factors . . . may vary from case to case.” General Plastic, Paper 19 at 21; see also id. at 18. For the foregoing reasons, we are not persuaded that any of factors 1, 5, or 6 weigh in favor of exercising our discretion to deny institution. Accordingly, upon review of the evidence and the General Plastic factors, we are not persuaded that we should exercise our discretion to deny institution under § 314.” slip op. at 10
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We do not agree with Patent Owner’s arguments that Best is merely cumulative of Bonella. Initially, we note that Patent Owner’s arguments are difficult to reconcile, given that the Board denied institution in the Hynix IPR over the combination of Bonella and Mills but found a facially similar claim in the ’831 patent unpatentable in a final written decision over the combination of Best, Bonella, and Mills in IPR2017-00692. IPR2017- 00649, Paper 7 at 5–15; IPR2017-00692, Paper 25 at 31–40. This would seem to indicate that Best is not merely cumulative of Bonella. Moreover, in the Hynix IPR, petitioner had not shown, for purposes of institution, that Bonella alone taught the limitations of the third clause in claim 1. IPR2017-00649, Paper 7 at 5–15. Specifically, the Board found that petitioner “does not point to any disclosure in Bonella, however, that indicates what frequency the DRAM is operating at during a power loss.” Id. at 11; see also id. at 12 (“Petitioner does not provide sufficient objective evidence sufficient to support a finding that the DRAM operates at the frequency of Power Level 4 when a power failure occurs during Power Level 4”). Here, Petitioner relies on a combination of Best and Bonella to teach the third clause’s limitations in claim 1 (and claim 15), where Bonella is only relied upon to teach the “third clock frequency” portion of the limitation, as opposed to the entire limitation, as was asserted in the Hynix IPR. See Pet. 34–38. We find this sufficient to determine that the art and arguments presented in the Hynix IPR are not substantially similar. We conclude that the art raised in the Petition is not the same or substantially the same as that presented to the Office during the Hynix IPR; nor do we consider the arguments for unpatentability to be substantially similar. As such, we decline to exercise our discretion under 35 U.S.C § 325(d) to deny institution.” slip op. at 15
- BurdenInstituted
“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)); see also Intelligent Bio-Sys., 821 F.3d at 1369. Therefore, to prevail in an inter partes review, Petitioner must explain how the proposed combinations of prior art would have rendered the challenged claims unpatentable. At this preliminary stage, we determine whether the information presented in the Petition shows there is a reasonable likelihood that Petitioner would prevail in establishing that at least one of the challenged claims would have been obvious over the proposed combinations of prior art. slip op. at 17
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 8,301,833
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.