- Crowdstrike, Inc. v. Webroot Inc.InstitutedPTAB · May 5, 2023 · IPR2023-00126 · APJ Aaron W Moore · IPR · Institution
The Board instituted review of claims 1–4, 7–8, 10–13, and 16–19 on all presented grounds; Morris-based challenges met the reasonable-likelihood threshold, while Capalik challenges did not.
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 1–4, 7–8, 10–13, and 16–19 of the ’224 patent on all presented challenges. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1353 (2018) (“The agency cannot curate the claims at issue but must decide them all.”). B.” slip op. at 4
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“7. Assessment As discussed above, the second, third, fourth, and fifth Fintiv factors weigh against exercising our discretion to deny institution; and the first and sixth factors are neutral. Given the parties’ relatively modest investment thus far in the related litigation and the likelihood that trial will occur in the related litigation several months after we reach a Final Written Decision in this proceeding, we decline to exercise our discretion under 35 U.S.C. § 314(a) to deny the Petition. B.” slip op. at 16
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDenied
“We apply a two-part analysis under § 325(d), first assessing whether the same or substantially the same art or arguments were previously presented to the Office, and if so, whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of challenged claims. See Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6, 8 (Feb. 13, 2020) (precedential).” slip op. at 16
- Obviousness (§103) › Objective indicia / secondary considerations › NexusObjective indicia no nexusDecided for petitioner
“We have reviewed the portions of the district court complaint that Patent Owner cites. Although Patent Owner characterizes those passages as “providing evidence” of a long-felt need, they cite only to the ’224 patent itself. See Ex. 2015, 72–82. We do not discern evidence with the kind of specificity for objective indicia of nonobviousness, notably including evidence of a nexus with the merits of the challenged claims, that would cause us to fault Petitioner for failing to address the evidence in its Petition. See Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, Paper 33, 31–35 (PTAB Jan. 24, 2020). We accordingly decline to deny the Petition on this basis alone. The parties will have an opportunity during the trial to develop Patent Owner’s evidence of objective indicia of nonobviousness so that it may be fully considered. D.” slip op. at 19
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,257,224 - PTAB · May 4, 2023 · IPR2022-01500 · APJ Jason W Melvin · IPR · Institution
The Board instituted IPR on claims 1, 2, 10–13, 23, and 24 based on the petition’s three obviousness grounds.
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 . . . and any response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons set forth below, we conclude that Petitioner has shown a reasonable likelihood it will prevail in establishing the unpatentability of at least one challenged claim, and we institute inter partes review.” slip op. at 2
- Skill levelSkill level petitioner adoptedOther
“II. ANALYSIS A. LEVEL OF ORDINARY SKILL IN THE ART Petitioner asserts that ordinarily skilled artisans “would have had at least a bachelor’s degree in physics, engineering physics, mechanical engineering, electrical engineering, or a related field, and at least two years of work experience in transportation lighting.” Pet. 14 (citing Ex. 1002 ¶¶ 32–35). Patent Owner “disputes Unified’s proposed level of ordinary skill” and proposes that skilled artisans: would have had a Master’s of Science Degree (or a similar technical Master’s Degree, or higher degree) in an academic area emphasizing electrical engineering, computer engineering, or computer science with experience or education in optics and imaging systems or, alternatively, a Bachelor’s Degree (or higher degree) in an academic area emphasizing electrical, computer engineering or computer science and having two or more years of experience in the field of optical and imaging systems. Prelim. Resp. 16. Patent Owner, however, does not explain the significance of the differing levels of ordinary skill proposed. To the extent Patent Owner 3 German Patent DE 199 23 187 C2, issued May 3, 2001 (Ex. 1006 (certified translation); Ex. 1007 (original)). believes the level of ordinary skill affects this proceeding, it should explain that in the instituted trial.” slip op. at 5
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“B. CLAIM CONSTRUCTION The parties agree that no express claim construction is required at this stage. Pet. 14; Prelim. Resp. 16. We therefore do not construe the claims for this decision. 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)). To the extent the scope of a particular claim term impacts a party’s argument during trial, the party should propose an express construction and show how the record supports it.” slip op. at 6
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Instituted
“1. The “control” limitation Patent Owner argues that the Petition fails to show that the asserted combination discloses “the control limitation in claims 1–22”—“control at least a first plurality of the LED light sources to provide light based at least in part on the determined light change and prior to the motor vehicle reaching the road curvature.” Prelim. Resp. 20. Patent Owner contrasts Gotou’s motor-pivoted single-lamp unit with Harbers’s non-moveable multi-LED system, contending “the applied references are not functionally interchangeable.” Id. Petitioner, however, does not rely on interchanging the mechanical aspects of the two systems. Rather, the combination applies Gotou’s control system with Harbers’s LED light source. Pet. 20–28. Petitioner has adequately supported that Gotou’s control system would determine the desired optical axis, which could then be realized with Harbers’s light sources.” slip op. at 8
Claim construction§ 103 obviousnessDiscretionary denialPatents in suitUS 11,208,029 - Crowdstrike, Inc v. Open Text Inc.InstitutedPTAB · Apr 21, 2023 · IPR2022-01522 · APJ Patrick M Boucher · IPR · Institution
The Board instituted IPR on claims 1, 3, 4, 9, 11, 12, and 17 on all petitioned grounds, finding a reasonable likelihood of success on the Shukla and Dalcher challenges.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Applying the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of a reasonable likelihood that Petitioner would prevail with respect to at least one challenged claim, we grant the Petition and institute an inter partes review. The Board has not made a final determination regarding the patentability of any claim.” slip op. at 2
- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“the related litigation is mid-July 2024. Pet. 65; Prelim. Resp. 7. This is generally consistent with the currently scheduled trial date of August 19, 2024. See Ex. 2007, 18; Prelim. Resp. 7. Although Petitioner contends that the complexity of the related litigation is likely to delay the trial further, the currently scheduled date is already about four months later than the deadline for the Board to issue a final written decision. See Pet. 66. This time difference is already sufficient for this factor to weigh against exercising discretion to deny institution, and we need not speculate whether a further trial delay in the related litigation is likely. We accordingly treat this factor as weighing against exercising our discretion to deny institution.” slip op. at 11
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundInstituted
“Petitioner reasons that, based on such a teaching, it would have been obvious for a person of ordinary skill in the art “to configure Shukla’s injected module to execute stack walk processing upon invocation of an API function in the monitored application memory space.” Id. at 24–25 (citing Ex. 1003 ¶ 107). As an example, Petitioner contends that a skilled artisan “would have understood that Dalcher’s stack walk processing would have been advantageously performed as part of the injected module’s ‘post processing of the results returned by the target function,’” as described by Shukla. Id. at 25 (quoting Ex. 1004 ¶ 54; citing Ex. 1003 ¶ 107). Relying on Dr. Lee’s testimony that “[i]t was well-known for over a decade prior to the ’591 Patent that ‘[t]he call stack of a program execution can be a very good information source for intrusion detection,’” Petitioner reasons that a person of ordinary skill in the art “would have been motivated to apply the teachings of Dalcher to enable Shukla’s injected module to perform Dalcher’s stack walk processing upon invocation of one of Shukla’s targeted API functions to predictably improve the module’s ability to detect and prevent malware intrusions to improve similar monitoring applications in the same way.” Ex. 1003 ¶ 108 (quoting Ex. 1025); Pet. 25. Patent Owner disputes Petitioner’s reasoning “because a [person having ordinary skill in the art] would never have been motivated to combine the teachings of two fundamentally different monitoring methods where doing so would serve no purpose.” Prelim. Resp. 37. According to Patent Owner, and supported by Dr. Medvidovic’s testimony, a person of ordinary skill in the art “would understand that Shukla’s system would only be capable of processing ‘the results returned by the target function’ for call frames that have completed execution and are no longer on the call stack.” Id. at 38 (citing Ex. 1004 ¶ 54; Ex. 2001 ¶ 101). Because “[t]he post-processing step would relate to only these executed and completed calls,” Patent Owner reasons that “there would be no need for gathering information or Dalcher’s stack walk,” and “Dalcher’s stack walk serves no practical purpose when shoehorned into Shukla’s ‘post processing’ step.” Id. (citing Ex. 2001 ¶ 101). Patent Owner adds that “[i]mplementation of Dalcher’s stack walk within Shukla’s sandbox would be superfluous because Shukla’s sandbox will ultimately allow execution and apply its own rule set to allow or ‘block potential adverse effects’—regardless of any information returned by the alleged addition of Dalcher’s stack walk.” Id. at 38–39 (quoting Ex. 1004 ¶ 34 (emphasis by Patent Owner), citing Ex. 2001 ¶¶ 103, 105). Both parties support their respective positions with testimony by the respective experts. The preliminary record before us presents insufficient basis to discount the testimony of either expert, and the record would benefit from cross-examination of those declarants. Mindful of the standard we apply at this stage, we determine that Petitioner makes a sufficient showing with respect to the “executing stack walk processing” limitation.” slip op. at 30
- Obviousness (§103) › Motivation to combine / reasonable expectation of success › Teaching awayTeaching away not foundDecided for petitioner
“Patent Owner contends that a person of ordinary skill in the art would not have been motivated to effect the combination of teachings that Petitioner proposes because Shukla “teaches away from ‘preventing execution of a payload’ ‘when an alert of suspicious behavior is triggered.’” Prelim. Resp. 48–49. This is so, Patent Owner says, because Shukla’s sandbox, “rather than interfere with the execution of the application, ‘detect[s] and block[s] potential adverse effects resulting from an attack or malware, but does not interfere with the normal execution of the valid application 1 and allows it to function as intended.’” Id. at 49 (quoting Ex. 1004 ¶ 34) (alterations by Patent Owner). But Shukla’s statements do not appear to make criticisms that would rise to the level of a teaching away. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art reference does not teach away from the claimed subject matter unless the prior-art reference also criticizes, discredits, or otherwise discourages the solution claimed). Patent Owner will have an opportunity during the trial to revisit and elaborate on this argument. For the reasons set forth above, we conclude that Petitioner” slip op. at 36
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 10,284,591 - Nike, Inc. v. Valmarc CorporationInstitutedPTAB · Apr 18, 2023 · IPR2022-01404 · APJ Hyun J Jung · IPR · Institution
The Board instituted review of claims 1–34 on all petitioned grounds, finding a reasonable likelihood that Nike would prove at least one claim unpatentable.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“[T]he [Office] is permitted, but never compelled, to institute an [inter partes review] proceeding.”). Pursuant to 35 U.S.C. § 325(d), in determining whether to institute an inter partes review, “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In evaluating the exercise of discretion to deny institution under § 325(d), the Board uses the following two-part framework: (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 challenged claims. Advanced Bionics, LLC v. Med-El Electromedizinishe Gerӓte GmbH, IPR2019-01469, Paper 6, 8 (PTAB Feb. 13, 2020) (precedential).” slip op. at 6
- 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 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 1–34 of the ’736 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 adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical industry experience working with coded symbologies and networked data systems.” Pet. 13 (citing Ex. 1007 ¶ 51). Petitioner also argues that “[a]n increase in experience could compensate for less education, and vice-versa.” Id. (citing Ex. 1007 ¶ 51). Patent Owner “reserves the right to dispute” Petitioner’s proposed level of ordinary skill, but argues that Petitioner’s arguments fail under its proposal. Prelim. Resp. 16 (citing Pet. 13). Patent Owner also states that it “believes that the definition of a [person of ordinary skill in the art] is not material to the outcome of this Petition.” Id. 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 10
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner
“Turning to the Specification, Patent Owner refers to a portion of the Specification that indicates that holographs may be “in the form of a self-adhesive decal” and are not effective because they can be counterfeited. Ex. 1004, 2:9–18. Another cited portion states that an object of the ’736 patent is to provide “a specially designed authenticator to be carried by an article.” Id. at 3:11–12. Other cited portions describe that “the Brand ‘source’ authenticator is a relatively thin, circular disk” (Ex. 1004, 4:18–21), and that authenticator blank 52 can be “of predetermined configuration, size and thickness” (id. at 5:59–60) and “is preferably fabricated from good quality steel or other metal, or combinations or compounds of metal” (id. at 5:67–6:2) (emphasis added). The ’736 patent states that “[c]eramics, glass, plastics and other materials, natural and/or synthetic, suitable to accept direct part markings of encoded symbology 58, may just as well be utilized for authenticator blanks 52.” Id. at 6:5–8. Patent Owner also refers to portions that state “[g]enerally encoded symbols, such as symbol 58, are so applied to a carrier strip such as a pressure sensitive label which could then be applied to authenticator 50” but “[i]t is preferable for the instant invention to apply symbology 58 by direct authenticator 50 “may just as well have its encoded symbology 58 applied onto a substrate and the substrate affixed to surface 54 of authenticator 50”), 10:43–46 (stating that “[w]hile symbology 58 is preferably direct part marked onto or into its surface 56 it may also be first applied to a substrate which is thereafter secured to surface 56 of authenticator blank 52”). As shown above, the Specification indicates that an “authenticator”” slip op. at 14
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 8,063,736 - Nike, Inc. v. Valmarc CorporationInstitutedPTAB · Apr 18, 2023 · IPR2022-01403 · APJ Hyun J Jung · IPR · Institution
The Board instituted IPR on claims 1–15 over all presented grounds, finding a reasonable likelihood that Nike would prevail on at least one challenged claim.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dDenied
“Ex. 1001, code (56). None of Kirillina, DataMax, Moore-073, Berzack, Hudson, and Moore-778, the references relied on by Petitioner, are listed on the face of the patent. See id. The Office did not consider previously any of Petitioner’s asserted prior art or the grounds raised in the Petition. Ex. 1001, code (56); Ex. 1002, 63–76 (Office action mailed Dec. 4, 2009), 77 (Notice 2 US 2005/0273434 A1, published Dec. 8, 2005 (Ex. 2001). 3 US 6,533,180 B1, issued Mar. 18, 2003 (Ex. 2002). 4 US 5,521,815, issued May 28, 1996 (Ex. 2003). Disclosure Statement). Furthermore, Petitioner argues that the claims would have been obvious based on Kirillina, Moore-073, or Hudson. Pet. 21–58. The Examiner rejected the then pending independent claims as anticipated by Lubow. Ex. 1002, 63–76. Those independent claims were not rejected as being rendered obvious by any of Petitioner’s asserted prior art. See id. at 65–75 (rejecting claims 1, 2, and 5–10 as anticipated by Lubow and claims 3, 4, and 11–13 as unpatentable over Lubow). Even if Kirillina, Moore-073, and Hudson are each substantially similar to Lubow, Wood, or Rose, Patent Owner does not address whether DataMax and Berzack are cumulative to references that have been already considered by the Office. See Prelim. Resp. 15–20. Petitioner also argues obviousness based on combinations with DataMax and Berzack. Pet. 29–30 (arguing obviousness based on Kirillina and DataMax), 31–40 (arguing obviousness based on Moore-073 and Berzack). The challenges based on these combinations are not based on substantially the same art and cannot be based on substantially the same arguments as previously presented during prosecution. See Ex. 1002, 63–76. Moreover, Petitioner’s testimonial evidence was not before the Examiner during prosecution. Pet. 4. Thus, for the reasons above, the record does not persuade us that” slip op. at 8
- 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 [claim] it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). This burden of persuasion never shifts to Patent Owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). The Board may authorize an inter partes review if we determine that the information presented in the Petition shows that there is a reasonable likelihood that Petitioner will prevail with respect to at least one of the claims challenged in the petition. 35 U.S.C. § 314(a). slip op. at 10
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner argues that one of ordinary skill in the art “would have had at least a bachelor’s degree in mechanical engineering, electrical engineering, computer science or an equivalent field and two years of industry experience working with coded symbologies and networked data systems.” Pet. 14 (citing Ex. 1007 ¶ 51). Petitioner also argues that “[a]n increase in experience could compensate for less education, and vice-versa.” Id. (citing Ex. 1007 ¶ 51). Patent Owner “reserves the right to dispute” Petitioner’s proposed level of ordinary skill, but argues that Petitioner’s arguments fail under its proposal. Prelim. Resp. 21. Patent Owner also states that it “believes that outcome of this Petition.” Id. 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 11
- Claim Construction › Intrinsic evidence (Phillips canons) › Lexicography (patentee as own lexicographer)Term construed board ownDecided for patent owner
“this stage, we agree with Patent Owner that the Specification defines “Brand” because it states: A Brand (or trademark, or service mark, as they are often referred to), as referred to herein, is any word, name, phrase, symbol, design or device or any combination of words, names, phrases, symbols, designs or devices which identifies and distinguishes the ‘source’ (such as the manufacturer, retailer, of another party. Ex. 1001, 1:30–36 (emphases added). The Specification supports that Brand “is used in its trademark sense,” as argued by Patent Owner. Prelim. Resp. 22. Prosecution history also supports Patent Owner. Ex. 1002, 54 (“A Brand is a trademark and a trademark to be considered to be a trademark must be used as a trademark.”). Patent Owner also points to a portion of the Specification that states “the authenticator carries an obviously observable Brand ‘source’ of the authenticator and authentication system” and “may also include a trademark of the Brand owner.” Prelim. Resp. 22; Ex. 1001, 3:24–32. This portion of the Specification supports Patent Owner’s position that “Brand” is unencoded and recognizable by a user to ensure accurate decoding by displaying the brand of the authentication system and to indicate the source to create good will. See Ex. 1001, 3:24–32. The Specification, however, does not appear to exclude “Brand” from being encoded yet still recognizable by a user. Ex. 1001, 1:30–36 (“[a] Brand . . . is any . . . symbol, design or device”), 3:24–42 (“an obviously observable Brand ‘source’ of the authenticator and authentication system”).” slip op. at 13
Claim construction§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,852,195 - 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
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.