- PTAB · Mar 10, 2023 · IPR2022-01354 · APJ Michelle N Wormmeester · IPR · Institution
The Board instituted IPR on claims 1–18 based on a reasonable likelihood that Jung and Park render them obvious under § 103.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“(Paper 2, “Pet.”) requesting inter partes review of claims 1–18 of U.S. Patent No. 10,546,685 B2 (Ex. 1001, “the ’685 patent”). Scramoge Technology Ltd. (“Patent Owner”) did not file a preliminary response. We have authority under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Under 35 U.S.C. § 314(a), an inter partes review may not be instituted “unless . . . 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 that follow, we institute an inter partes review as to all the challenged claims of the ’685 patent based on the sole ground presented.” slip op. at 2
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner additionally acknowledges that Jung already teaches using double-sided tape to secure central coil 131 to first and second side coils 133 and 135, but contends that Jung’s method of securing central coil 131 to side coils 133 and 135 could be improved with Park’s step feature. Pet. 49. As support, Petitioner points us to where Park describes the disadvantages of using adhesives to secure coils. Id. (citing Ex. 1008, 3). Park states that “when an external shock is applied” in this case, “bonding may be released and there may be a problem that a defect occurs.” Ex. 1008, 3. Park adds that applying adhesives “may be performed in a complicated manner or manually,” and, “[t]herefore, it may be difficult to accurately align gaps between the three coils or positions, and accordingly, there may be a problem that uniformity is not guaranteed.” Id. According to Park, its cover for a wireless charger “can simplify a process, increase durability, and achieve uniformity of quality, by allowing three coils for power transmission (TX) of a wireless charger to be easily arranged in proper positions by a simple process.” Id. In other words, Park’s step feature provides an alternative, advantageous way to secure coils.” slip op. at 25
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner asserts, “Here, claim construction is unnecessary.” Pet. 19. For purposes of this Decision, we conclude that no claim term requires 2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103, effective March 16, 2013. Because the ’685 patent issued from an application that was filed after this date, we apply the AIA version of § 103. 3 Jung et al., U.S. Publ’n No. 2013/0069586 A1, published Mar. 21, 2013 (Ex. 1006). 4 Park et al., Korean Publ’n No. 10-2014-0019955, published Feb. 18, 2014 (MultiLing Corp. trans. 2022) (Ex. 1008). express interpretation at this time to resolve any controversy in this proceeding. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).” slip op. at 7
Claim construction§ 103 obviousnesscites PhillipsPatents in suitUS 10,546,685 - PTAB · Feb 24, 2023 · IPR2022-01375 · APJ Russell E Cass · IPR · Institution
The Board instituted IPR on claims 1–4, 6–7, 10–19, 21, and 22 on every asserted ground, finding a reasonable likelihood of success on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted unless it is determined that “the information presented in the petition filed under section 311 and any response filed under section 313 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 (2018); see also 37 C.F.R § 42.4(a) (2021) (“The Board institutes the trial on behalf of the Director.”). The reasonable likelihood standard is “a higher standard than mere notice pleading,” but “lower than the ‘preponderance’ standard to prevail in a final written decision.” Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 at 13 (PTAB Dec. 20, 2019) (precedential). For the reasons provided below and based on the record before us, we determine that Petitioner has demonstrated a reasonable likelihood that it would prevail in showing the unpatentability of at least one of the challenged claims. Accordingly, we institute an inter partes review on all grounds set forth in the Petition.” slip op. at 2
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The parties appear to agree that it is the signals from the objects that are “unobstructed.” See Pet. 14–15; Prelim. Resp. 51. There also does not appear to be a substantive difference between the parties’ proposed constructions for “unobstructed”—namely, “without obstructions to signals” versus “unblocked” signals. However, in IPR2022-01376, Patent Owner makes arguments concerning the application of claim 1 of the related ’717 patent, which includes very similar language as claim 1 of the ’182 patent, that indicate a disagreement. IPR2022-01376, Paper 10 at 8–15. More specifically, as we discuss in our Institution Decision in IPR2022-01376, it appears that Patent Owner may be using the term “unblocked” to indicate that there is no material at all between the first and second tags (such as pages or covers of a library book), regardless of whether that material blocks the signals from the tags. IPR2022-01376, Paper 11 at 12–17. As we further discuss in our institution decision in that case, we preliminarily determined that the specification and prosecution history of the ’717 patent does not support Patent Owner’s apparent construction of “unobstructed,” and preliminarily construed “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. IPR2022-01366, Paper 11 at 14–16. We adopt the same preliminary construction of “unobstructed” in this proceeding. The parties may further address this claim construction issue in future briefs during the trial.” slip op. at 10
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). Petitioner asserts that “system” is a recognized nonce word, and argues that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem.’” Pet. 6–7. From this, Petitioner concludes that “sensing subsystem” is governed by § 112 ¶ 6. Id. Patent Owner argues that Petitioner has failed to rebut the presumption and that a person of ordinary skill in the art would recognize “sensing subsystem” as the name of sufficiently definite structure. Prelim. Resp. 38. We agree that Petitioner has not overcome the presumption that § 112 ¶ 6 does not apply. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’”—is conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. Pet. 6–7; cf. Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”). Patent Owner points to dependent claims 4 and 5, which depend from” slip op. at 12
- Skill levelSkill level petitioner adoptedDecided for petitioner
“In determining the level of ordinary skill in the art, various factors may be considered, including the “type of problems encountered in the art; prior art solutions to those problems; rapidity with which innovations are made; sophistication of the technology; and educational level of active workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation marks and citation omitted). Petitioner, relying on the testimony of Dr. Sharony, contends that a person of ordinary skill in the art at the time of the alleged invention would have had “at least a bachelor’s degree in electrical engineering, computer 3 At this stage of the proceeding, Patent Owner has not presented objective evidence of non-obviousness. science, or a related field and significant experience with detection devices, like RFID and metal detectors.” Pet. 6 (citing Ex. 1002 ¶¶ 16, 22). Patent Owner does not offer a definition of the level of ordinary skill at this stage of the proceeding. See Prelim. Resp. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’182 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 15
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSRPatents in suitUS 9,646,182 - PTAB · Feb 24, 2023 · IPR2022-01377 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–8, 10–12, and 14–22 on all asserted grounds after 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
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’293 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’293 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner, relying on the testimony of Dr. Sharony, contends that: A person having ordinary skill in the art (“POSITA”) at the time of the alleged invention would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field and significant experience with detection devices, like RFID and metal detectors. Pet. 4–5 (citing Ex. 1002 ¶ 22). Patent Owner, at this stage, does not explicitly address Petitioner’s proposal or propose a different definition of the person of ordinary skill in the art. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’293 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 9
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for patent owner
“The arguments made by the applicant during prosecution indicate that the terms “unshielded” and later “unobstructed” were added to distinguish the claimed subject matter over prior art having a shield that “blocks substantially all interrogation signals” from an object such that the “interrogator will not detect the [object].” See id. at 222. This suggests that “unobstructed” means that there is no structure akin to a shield between the objects that blocks signals to the extent that an object cannot be detected. For purposes of this decision, we preliminarily construe “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. This determination is preliminary. The parties are encouraged to further address this claim construction issue in future briefs during the trial, and preferably with a focus on intrinsic evidence.” slip op. at 19
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Instituted
“Patent Owner argues that Garber does not disclose a user interface in the recited “portable configuration” and, therefore, “does not teach a wholly portable interrogator.” Prelim. Resp. 6–7. Patent Owner argues that “[t]he touchpad in Garber is always located in a separate ‘palm-top’ or hand-held computer that is tethered to the RFID reader,” rather than “in an integrated or attached hand-held arrangement.” Id. at 10. Thus, Patent Owner’s arguments are based, at least in part, on its proposed construction of “portable configuration” as limited to an “integrated” or “attached” configuration. These arguments are unavailing as we, for the reasons discussed above in the claim construction section, do not adopt Patent Owner’s limiting claim construction. Also, we understand Patent Owner to argue that “the user interface [of Garber’s Figure 13] does not include an integrated input device having a tactile sensor.” Id. (citing Ex. 2008 (Kinney Decl.) ¶ 23). On the present record, this argument is unavailing. Even if Patent Owner’s proposed construction of “touchpad” as requiring a tactile sensor is correct (an issue we do not reach at this time), id. at 8–9, neither Patent Owner nor Mr. Kinney explains adequately the basis for the assertion that Garber’s device lacks a tactile sensor. See id. at 10; Ex. 2008 ¶ 23. We determine that Petitioner has demonstrated a reasonable likelihood of showing that Garber discloses “a user interface including a touchpad and a display embodied in a portable configuration with said control and processing subsystem and said antenna.” e. Conclusion as to Independent Claim 1 Having considered the parties’ arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenge to claim 1 as anticipated by Garber. 4. Independent Claim 17 and Dependent Claims 2–8, 12, 14–16, and 18–22 Independent claim 17 recites a method of operating a portable interrogator configured the same as or similar to the apparatus of independent claim 1. See Ex. 1001, 30:52–61. The remaining challenged claims are all dependent claims. For these claims, Patent Owner does not present arguments beyond those regarding independent claim 1 and discussed above. Having considered Petitioner’s arguments and evidence, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing in its challenges to claims 2–8, 12, and 14–22 as being anticipated by Garber. E. The Alleged Obviousness of Claims 10 and 11 over Garber and Anderson” slip op. at 26
Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 10,482,293 - PTAB · Feb 24, 2023 · IPR2022-01376 · APJ Ken B Barrett · IPR · Institution
The Board instituted IPR on claims 1–4 and 6–20 on all asserted grounds, finding a reasonable likelihood of prevailing on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’717 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’717 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner, at this stage, does not explicitly address Petitioner’s proposal or propose a different definition of the person of ordinary skill in the art. Based on the present record, we preliminarily determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’717 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). For purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art.” slip op. at 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownOther
“The arguments made by the applicant during prosecution indicate that the terms “unshielded” and later “unobstructed” were added to distinguish the claimed subject matter over prior art having a shield that “blocks substantially all interrogation signals” from an object such that the “interrogator will not detect the [object].” See id. at 222. This suggests that “unobstructed” means that there is no structure akin to a shield between the objects that blocks signals to the extent that an object cannot be detected. For purposes of this decision, we preliminarily construe “unobstructed” as meaning that there is no structure located between the objects that blocks signals from an object to the extent that the object cannot be detected by the antenna of the interrogation system. This determination is preliminary. The parties are encouraged to further address this claim construction issue in future briefs during the trial, and preferably with a focus on intrinsic evidence.” slip op. at 16
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“argues that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem.’” Pet. 6. From this, Petitioner concludes that “sensing subsystem” is governed by § 112 ¶ 6. Id. Patent Owner argues that Petitioner has failed to rebut the presumption and that a person of ordinary skill in the art would recognize “sensing subsystem” as the name of sufficiently definite structure. Prelim. Resp. 42. We agree that Petitioner has not overcome the presumption that § 112 ¶ 6 does not apply. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’”—is conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. Pet. 5–6; cf. Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”). Patent Owner points to dependent claims 4 and 5, which depend from claim 3 and, respectively, recite an “RFID sensing subsystem” and a “metal sensing subsystem.” Prelim. Resp. 44–45. Patent Owner argues that those claims 4 and 5 support a determination that “sensing subsystem” connotes a known structure rather than a nonce word. Id. We, at this stage, find that argument persuasive, particularly where Petitioner contends that a person of ordinary skill in the art would recognize the recited “RFID sensing subsystem” and “metal sensing subsystem” as sufficiently definite structures. See Pet. 10–11. We preliminarily determine that § 112 ¶ 6 does not apply to “a sensing subsystem configured to provide [the recited two signals] from said antenna to said control and processing subsystem” and that the phrase is not a means-plus-function limitation.” slip op. at 18
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,996,717 - PTAB · Feb 24, 2023 · IPR2022-01374 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on claims 1, 3–10, 15, 16, and 18 on all asserted grounds, finding a reasonable likelihood that claim 1 would be shown obvious over Garber and Werb.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a) (2018). Having considered the arguments and evidence presented by Petitioner and Patent Owner, we determine that Petitioner has demonstrated a reasonable likelihood of prevailing on at least one of the challenged claims of the ’711 patent. Accordingly, we institute an inter partes review as to all the challenged claims of the ’711 patent on all the grounds of unpatentability set forth in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“would have had at least a bachelor’s degree in electrical engineering, computer science, or a related field” and “significant experience with detection devices, like RFID and metal detectors.” Pet. 5 (citing Ex. 1002 ¶ 22). Patent Owner, at this stage, does not explicitly address Petitioner’s proposal or propose a different definition. We determine that the definition offered by Petitioner comports with the qualifications a person would have needed to understand and implement the teachings of the ’711 patent and the prior art of record. Cf. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art itself may reflect an appropriate level of skill in the art). Thus, for purposes of this decision, we apply Petitioner’s description of the person of ordinary skill in the art. slip op. at 8
- Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner
“The lack of the word “means” in a claim element creates a rebuttable presumption that § 112 ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015). “When a claim term lacks the word ‘means,’ the presumption can be overcome and § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Id. at 1349 (citation omitted). “Generic terms such as ‘mechanism,’ ‘element,’ ‘device,’ and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word ‘means’ because they ‘typically do not connote sufficiently definite structure’ and therefore may invoke § 112, para. 6.” Id. at 1350 (citation omitted). Petitioner asserts that “system” is a recognized nonce word, and argues that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem.’” Pet. 6. From this, Petitioner concludes that “sensing subsystem” is governed by § 112 ¶ 6. Id. Patent Owner argues that Petitioner has failed to rebut the presumption and that a person of ordinary skill in the art would recognize “sensing subsystem” as the name of sufficiently definite structure. Prelim. Resp. 38. We agree that Petitioner has not overcome the presumption that § 112 ¶ 6 does not apply. Petitioner’s critical propositions—that “the ‘sensing subsystem’ term is a nonce word” and that “the purely functional prefix ‘sensing’ does nothing to impart structure to the term ‘subsystem’”—are conclusory attorney-argument for which Petitioner points to no adequate evidentiary support. Pet. 6; cf. Williamson, 792 F.3d at 1349 (“The standard is whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”); Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996) (“What is important is not simply that a ‘detent’ or ‘detent mechanism’ is defined in terms of what it does, but that the term, as the name for structure, has a reasonably well understood meaning in the art.”). We thus preliminarily determine that § 112 ¶ 6 does not apply to “a” slip op. at 9
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Both parties offer proposed constructions for “sensing subsystem” if the phrase is not deemed to be governed by § 112 ¶ 6. Petitioner’s proposed construction is a “self-contained system for sensing within a larger system” “that performs the function recited in the claim.” Pet. 10. Patent Owner’s proposed construction is “a component configured to detect a signal representing an object and convert from one format to another.” Prelim. Resp. 43–44. Petitioner does not adequately explain the reason for including the “self-contained” modifier, and, for its part, Patent Owner does not adequately explain the inclusion of “convert from one format to another.” Thus, for purposes of this decision, we do not adopt either party’s proposed construction.” slip op. at 11
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 7,557,711 - PTAB · Jan 24, 2023 · IPR2022-01248 · APJ Aaron W Moore · IPR · Institution
The Board instituted IPR on all presented grounds for claims 1–21 and 23–30, finding a reasonable likelihood of proving at least one challenged claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. We accordingly institute an inter partes review of claims 1–21 and 23–30 of the ’653 patent on all presented challenges. See SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018). B.” slip op. at 4
- BurdenMixed
“For the reasons above, based on the present record, Petitioner’s arguments do not show adequately that Yegoshin would have been understood to have multiplexed signals, or that Bernard “includes or operates as a multiplexer for combining the data packets” (Pet. 37). Because Petitioner does not sufficiently show multiplexed signals in any of the asserted references, Petitioner does not provide enough argument and evidence that its proposed combination of Yegoshin, Johnston, Billström, and Bernard would have “a single interface comprised of multiplexed signals from the plurality of wireless transmit and receive components,” as required by claim 1. For these reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove claim 1 unpatentable over the combination of Yegoshin, Johnston, Billström, and Bernard. For the same reasons, we find that Petitioner has not shown a reasonable likelihood that it will prove dependent claims 2–13 unpatentable over the combination. However, because claim 1 will remain in the proceeding under SAS, we also provide our preliminary views on the dependent claims.” slip op. at 28
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededNot reached
“Claim Construction Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does not propose an interpretation for any term but, as discussed below in Section II.D, argues that Petitioner should have disclosed and applied the claim constructions it has advanced in related litigation. At this preliminary stage, we determine that the record does not require use to resolve any claim construction dispute to decide whether or not to institute. 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)). C.” slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Level of Ordinary Skill in the Art Petitioner asserts that one 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 at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. As Patent Owner does not dispute Petitioner’s characterization of the level of skill in the art, and because we find it generally consistent with the disclosures of the ’653 patent and the prior art, we adopt it for purposes of this analysis. B.” slip op. at 10
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,842,653 - PTAB · Jan 24, 2023 · IPR2022-01249 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–21 and 26–30 on all presented 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, an inter partes review may not be instituted “unless . . . there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” Upon consideration of the Petition in view of the present record and for the reasons explained below, we determine that Petitioner has shown a reasonable likelihood of prevailing with respect to at least one of the challenged claims. Thus, we institute an inter partes review of claims 1–21 and 26–30 of the ’946 patent on all presented challenges. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359–60 (2018).” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that one 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 at least two years of experience related to the design or development of wireless communication systems, or the equivalent.” Pet. 3 (citing Ex. 1003 ¶¶ 27–28). Petitioner also states that “[a]dditional graduate education could substitute for professional experience, or significant experience in the field could substitute for formal education.” Id. (citing Ex. 1003 ¶¶ 27–28). Patent Owner does not propose a level of ordinary skill and does not dispute Petitioner’s proposal. See generally Prelim. Resp. Based on the preliminary record, we adopt Petitioner’s asserted level of ordinary skill only to determine whether there is a reasonable likelihood that Petitioner would prevail with respect to at least one of the claims challenged in the Petition.” slip op. at 8
- BurdenInstituted
“Based on the preliminary record, Petitioner sufficiently shows that the proposed combination teaches all the limitations and that one of ordinary skill in the art would have combined the references in a manner asserted with a reasonable expectation of success.” slip op. at 17
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Petitioner states that “no formal claim constructions are necessary in this proceeding.” Pet. 2. Patent Owner does not propose an interpretation for any term. See generally Prelim. Resp. As discussed below, Patent Owner responds that Petitioner fails to disclose or apply its construction positions from related litigation. Id. at 10–20. At this preliminary stage, we determine that no claim term requires express interpretation.2 Realtime Data, LLC v. Iancu, 912 F.3d 1368, 1375 (Fed. Cir. 2019) (“The Board is required to construe ‘only those terms . . . that are in controversy, and only to the extent necessary to resolve the controversy.’”) (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 9
Claim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 9,019,946 - PTAB · Jan 4, 2023 · IPR2022-01199 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 for all petition grounds and granted Keysight’s motion to join the PAN IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 18–53, with PAN Pet. 18–50; see Prelim. Resp. 37, 41; supra § III.B.1; infra §§ III.C.6(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 35
- Obviousness (§103) › Motivation to combine / reasonable expectation of successInstituted
“determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the whitelisted destination domain, the security device filters the packet by forwarding it to the remote server with the whitelisted destination domain. See Ex. 1004, 7:52–59, 16:36–42; Ex. 1003 ¶ 97; see also Ex. 1004, 6:1–11. Filtering the newly received packet with encrypted data by forwarding it to the remote server with the whitelisted destination domain occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120. Hence, we disagree with Patent Owner that session traffic associated with a whitelisted destination domain is “simply forwarded to its destination without . . . filtering.” See Prelim. Resp. 20. Regarding the policy’s blacklist processing, if the security device determines that a newly received packet with encrypted data is correlated to the hostname corresponding to the blacklisted destination domain, the security device either blocks the packet (as Patent Owner contends) or filters the packet by forwarding it to a decryption engine. See Ex. 1004, 7:60–67, 9:61–67, 14:33–36, 16:43–48; Ex. 1003 ¶¶ 97–98, 101, 104, 115, 125, 134, 1144; Prelim. Resp. 19. Filtering the newly received packet with encrypted data by forwarding it to a decryption engine occurs “without having to decrypt the encrypted secure tunnel session traffic.” Ex. 1004, 5:24–27, 5:35–42, 7:1–9, 11:7–19; see Ex. 1003 ¶¶ 101, 120, 142. Further, filtering the newly received packet with encrypted data by forwarding it to a decryption engine results from applying a packet-filtering rule (a blacklisted destination domain) to the packet and corresponds to limitation [1.g] and the similar limitations in claims 24 and 25. See Ex. 1003 ¶¶ 116, 141–142. Buruganahalli identifies the following advantage due to filtering packets with encrypted data based on a hostname extracted from a hello message: “the rest of the stream” containing packets with encrypted data “can be forwarded without any decryption resulting in less state to track thereby enhancing performance.” Ex. 1004, 5:43–51; see Ex. 1003 ¶ 120.” slip op. at 20
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“We disagree that factor (1) favors discretionary denial. When considering parallel litigation in light of Fintiv, the Board seeks to, among other things, minimize “inefficiency and duplication of efforts” when another tribunal may resolve “the same or substantially the same issues.” Fintiv, IPR2020-00019, Paper 11 at 5 n.7, 6, 14; see Intel Corp. v. VLSI Tech. LLC, IPR2019-01192, Paper 15 at 11 (PTAB Jan. 9, 2020). A stay of parallel litigation pending resolution of a Board proceeding “allays concerns about inefficiency and duplication of efforts.” Fintiv, IPR2020-00019, Paper 11 at 6. In the circumstances here, there are few, if any, “concerns about inefficiency and duplication of efforts.” In the 2017 Keysight case, neither the district court nor the jury determined the validity/invalidity of any claim in the ’856 patent over any prior art since the case settled before jury deliberations began. See Ex. 3004, 34; Prelim. Resp. 15; Opp. 3 n.1. Hence, factor (1) does not favor discretionary denial. (b)” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“Factor (1): Previous Petition For factor (1), Petitioner did not previously file a petition requesting an inter partes review of any claim in the ’856 patent. We recognize, however, that General Plastic has not been limited to proceedings where the same petitioner files multiple, staggered petitions and that “when different petitioners challenge the same patent,” we should consider “any relationship between those petitioners when weighing the General Plastic factors.” See, e.g., Valve, IPR2019-00062, Paper 11 at 9. In Valve, the Board noted that the petitioner Valve and a previous petitioner HTC “were co-defendants in the District Court litigation and were accused of infringing the [challenged] patent based on HTC’s VIVE devices that incorporate technology licensed from Valve.” Valve, IPR2019-00062, Paper 11 at 1, 10. Based on those particular facts, the Board determined that there was a “significant relationship” between Valve and HTC “with respect to Patent Owner’s assertion of the [challenged] patent.” Id. Here, in contrast to Valve, nothing in the current record indicates that there is a “significant relationship” between Petitioner and PAN “with respect to Patent Owner’s assertion of” the ’856 patent. That Petitioner copied PAN’s petition to present substantively identical challenges to claims 1, 24, and 25 in the ’856 patent does not create a “significant relationship” between Petitioner and PAN. Copying a previously instituted petition is “common in the joinder context” and “an accepted approach” because it is an efficient way to satisfy § 315(c)’s requirement to file a petition that “warrants the institution of an inter partes review.” Expedia, Inc. v. Express Mobile, Inc., IPR2022-00785, Paper 16 at 7–9 (PTAB Sept. 27, 2022). For these reasons, factor (1) does not favor discretionary denial.” slip op. at 50
§ 103 obviousnessDiscretionary denialPatents in suitUS 9,917,856 - PTAB · Jan 4, 2023 · IPR2022-01151 · APJ Steven M Amundson · IPR · Institution
The Board instituted IPR on claims 1, 24, and 25 on all petition grounds and granted Cisco’s motion to join the PAN IPR, subject to stated conditions.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“we decline Patent Owner’s invitation to depart from the “reasonable likelihood” standard for instituting trial. 7. CONCLUSION As discussed above, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37; supra § III.B.1; infra §§ III.C.5(c), III.D.3. Based on the current record, and for the reasons discussed above, Patent Owner’s arguments that the Petition fails to satisfy the “reasonable likelihood” standard for instituting trial lack merit. See supra §§ III.B.2–III.B.5. Hence, we determine that the Petition “warrants the institution of an inter partes review under section 314.” See 35 U.S.C. § 315(c).” slip op. at 36
- Other 314aInstitution denied discretionary otherDenied
“For these reasons, Patent Owner’s arguments about harassment and gamesmanship do not warrant the exercise of discretion to deny institution.” slip op. at 42
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Institution denied fintivDenied
“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.” Interim Procedure at 3 (citing Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A)); see id. at 7, 9. The Interim Procedure also explains that such a stipulation (a Sotera stipulation) “mitigates concerns of potentially conflicting decisions and duplicative efforts between the district court and the PTAB.” Id. at 7. Here, Petitioner stipulates as follows: If the Board institutes trial, Petitioner will not pursue, in any further proceedings at the district court, the specific grounds asserted in the inter partes review, or on any other ground that was raised or could have been reasonably raised in an IPR (i.e., any ground that could be raised under §§ 102 or 103 on the basis of prior art patent or printed publications). Pet. 22 (citing Sotera, IPR2020-01019, Paper 12 at 18–19). Because Petitioner provides a Sotera stipulation, we decline to exercise our discretion under § 314(a) to deny institution based on the Cisco case. See Interim Procedure at 3, 7, 9.” slip op. at 44
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticDenied
“potential for abuse” due to multiple, staggered petitions “challenging the same patent and same claims.” Gen. Plastic, IPR2016-01357, Paper 19 at 17. The Board said, “The absence of any restrictions on follow-on petitions would allow petitioners the opportunity to strategically stage their prior art and arguments in multiple petitions, using our decisions as a roadmap, until a ground is found that results in the grant of review.” Id. But roadmapping concerns are “minimized” when “a petitioner files a later petition that raises unpatentability challenges substantially overlapping with those” in an earlier petition and “the later petition is not refined based on lessons learned from later developments.” Code200, UAB v. Bright Data Ltd., IPR2022-00861, Paper 18 at 5 (PTAB Aug. 23, 2022) (precedential) (“Code200”); see Expedia, IPR2022-00785, Paper 16 at 9. Here, Petitioner presents substantively identical challenges to claims 1, 24, and 25 in the ’856 patent based on the same prior art and the same unpatentability theories as PAN presents in the PAN IPR. Compare Pet. 34–67, with PAN Pet. 18–50; see Prelim. Resp. 34, 37. And as discussed above, copying a previously instituted petition is “common in the joinder context” and “an accepted approach.” Expedia, IPR2022-00785, Paper 16 at 7–9; see supra § III.C.5(a). Further, any differences between the Petition and PAN’s petition did not result from roadmapping to correct a deficiency in PAN’s petition because the Board instituted review in the PAN IPR. See Code200, IPR2022-00861, Paper 18 at 5; Gen. Plastic, IPR2016- 01357, Paper 19 at 17. slip op. at 48
Discretionary denialPatents in suitUS 9,917,856 - Google LLC v. Express Mobile, Inc.InstitutedPTAB · Sep 27, 2022 · IPR2022-00790 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1, 2, 5–7, and 11 on the petition’s grounds and granted Google’s motion to join the Facebook IPR.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“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.” This Petition presents the same patentability challenges as those we found sufficient in the Facebook IPR, and Patent Owner does not argue the patentability merits of Petitioner’s challenges at this stage. See Pet. 1 (“[this] petition and the petition in the Facebook IPR Proceeding are substantively identical”); Prelim. Resp. 9, n.2 (“Patent Owner is not including technical merits arguments in its Preliminary Response.”). We thus conclude that Petitioner has demonstrated a reasonable likelihood of prevailing with respect to the challenged claims of the ’755 patent for the reasons given in the Institution Decision in the Facebook IPR.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Denied
“* * * As explained above, we find that only the first General Plastic factor favors denial. We thus conclude that, considered as a whole, the relevant factors do not favor a discretionary denial of institution.” slip op. at 12
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, grantedGranted
“the Motion would increase complexity. Petitioner has agreed to act as a understudy and thus will not have a material role in this proceeding unless it becomes the sole petitioning entity. Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
- PTAB / AIA Trials › §315(e) estoppelOther
“Having considered the parties’ arguments, we determine that it is appropriate under these circumstances to join Petitioner as a party to the Facebook IPR. Petitioner will be subject to the estoppel provisions of 35 U.S.C. § 315(e).” slip op. at 13
Discretionary denialPatents in suitUS 9,063,755
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.