- Lzlabs GmbH v. International Business Machines CorporationNo claims unpatentablePTAB · May 23, 2024 · IPR2023-00274 · APJ Michelle N Wormmeester · IPR · Final written decision
Claims 1–4, 6, 10–12, 16, and 17 were not shown unpatentable because Loderer did not teach a target machine condition code.
RulingsFinal written decision- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“For purposes of this Decision, we determine that no claim term requires express interpretation 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 9
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“c. Analysis We agree with Patent Owner. On this record, we find that Loderer does not teach or suggest the recited “target machine condition code.” Loderer says that “[t]he object of [its] invention is . . . to specify a method for simulating a condition code when porting hardware-specific program code from a source hardware to a target hardware that is not providing for condition code.” Ex. 1005, col. 1, para. 5 (emphasis added). Loderer’s claims are directed to “[a] method for simulating a condition code (CC), used for the execution of hardware-specific program code (PCU) for a source hardware (M1), in the program code (PCZ), obtained following transformation, for a differing target hardware (M2) with a machine architecture which operates without a condition code (CC).” Id., claim 1. In other words, Loderer’s target machine does not support condition codes, let alone a “target machine condition code.” Accordingly, Loderer does not teach or suggest a “target machine condition code.”” slip op. at 23
Patent outcomesUS 8,713,289 not shown unpatentableClaim construction§ 103 obviousnesscites PhillipsPatents in suitUS 8,713,289 - Unified Patents, LLC v. Peter Henrik PedersenAll claims unpatentablePTAB · May 10, 2024 · IPR2023-00029 · APJ Stacey G White · IPR · Final written decision
Claims 1 and 14–17 are unpatentable as obvious over Funk and Law and over Funk and Kamakura.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“We are persuaded that Petitioner’s description is consistent with the prior art and patent specification before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, we adopt Petitioner’s description.” slip op. at 12
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“the Challenged Claims, identified below, invoke §112 ¶6, Petitioner identifies their function and corresponding structure in compliance with 37 C.F.R. § 42.104(b)(3).” Id. at 11–21. We are not persuaded that any terms from the ’920 patent should be construed as means plus function terms.” slip op. at 13
- Obviousness (§103) › Motivation to combine / reasonable expectation of successUnpatentableMotivation foundUnpatentable
“[a] high volume e-mail ‘newspaper’ delivery system.” Ex. 1006, code (57). Funk’s newspaper is created by “manipulat[ing] publicly available information (AP wire service, Reuters, Business Wire, etc.)” and matching that information to a user profile. Id. at 1:49–50. These various inputs (information sources 100) all feed into service processing system 104. Id. at 5:43–44, Fig. 1. In addition, as we discussed above, Funk also discloses third parties that may send information to the customers. See Reply 9. Law’s “information delivery system includes a web server in operative communication with a plurality of recipients and a plurality of senders.” Ex. 1007, code (57). Thus, Law’s web server and Funk’s service processing system both connect multiple information sources to the email system. Law sets out to “improv[e] the collection and dissemination of recipient preferences for messages . . . by collecting recipient preference data and making it available to a plurality of senders for their use in preparing messages intended for a selected recipient.” Id. at 2:26–30. According to Petitioner, “[i]n the Funk-Law combination, Funk’s system would maintain profiles for senders in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles.” Reply 9–10 (citing Pet. 64, Ex. 1003 ¶ 130, Ex. 1006, 11:29–33). Dr. Houh opines on behalf of Petitioner that one of ordinary skill in the art would have been motivated to “enhance Funk such that the Funk combined processors . . . (1) include[] a software application used to receive sender information including sender identification information from senders via the Internet to establish and update sender profiles, and (2) store[] such sender information in the Funk combination database.” Ex. 1003 ¶ 129. According to Dr. Houh, this would have required the application of a known technique, Funk’s sending messages from parties to customers, by incorporating Law’s sender profiles to help keep track of, organize, and identify senders in Funk. Id. ¶ 130. “Funk contemplates a ‘high volume e-mail ‘newspaper’ delivery system’ that parties can use to send emails to customers, but does not provide explicit disclosure on how various parties sending messages would maintain profiles with Funk’s system.” Ex. 1003 ¶ 130. Dr. Houh further opines that “in the combination of Funk and Law, Funk’s system would maintain profiles for sending parties in the Funk combination database, and provide a way for senders to update their profile information, in the same way that Funk already allows customers to have user profiles that the users may update in Funk’s system.” Id. As such, we are persuaded that this modification would have been obvious in light of Law’s teachings. Patent Owner contends that “[t]here is no need in Funk for multiple sender profiles since it uses a single sender, and there is no motivation in Funk or Law to combine Law’s multiple sender profiles application with Funk’s system that only uses a single sender.” PO Resp. 36. We must, however, be mindful of the Supreme Court’s statement that “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Petitioner’s asserted modification would allow the existing information sources in Funk to target the impact of their information in a manner similar to the screening provided to users of Funk’s system. Petitioner provides a sufficient rationale to support its assertions that one of ordinary skill in the art would have been motivated to add this functionality to Funk’s system. We are persuaded that Petitioner is correct in asserting that the asserted modification would only require the application of a known method to achieve a predictable result. Pet. 63–65. slip op. at 37
Patent outcomesUS 6,965,920 unpatentableClaim construction§ 103 obviousnesscites Phillips · KSR · GrahamPatents in suitUS 6,965,920 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01317 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution because the Petition did not show a reasonable likelihood that claims 1–3, 5–8, 13–16, 18–20, 22, 26, 28, and 29 were unpatentable under § 103 over Orametrix, Faul, Breton, and Knighton.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“Conclusion as to claim 1 After reviewing the record, we find Petitioner has not adequately explained with sufficient evidence that “Orametrix and Faul, further in view of Breton, teach” the limitation at [Claim 1h]. Pet. 29 (citing Ex. 1013 ¶ 100). We find Petitioner has not provided sufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h] with a reasonable expectation of success. On this record, for the above reasons, we are unpersuaded that the Petition establishes a reasonable likelihood that claim 1 is unpatentable over the combination of Orametrix, Faul, Breton, and Knighton.” slip op. at 31
- BurdenDecided for patent owner
“Petitioner does not address whether switching Orametrix’s color features, as encoding features, illuminates the object with different colors at different times ([Claim 1h]). Petitioner states that “Orametrix describes changing the color of projected encoded features . . . .” Pet. 26. But Petitioner does not explain how that satisfies what [Claim 1h] calls for. Petitioner does not explain, for example, how changing the encoding features of Orametrix’s digital image projection (i.e., probe light (see discussion supra regarding [Claim 1c])) yields an illuminated object with different colors at different times. Even assuming arguendo that Orametrix’s color features, as encoding features, corresponds to the illuminating “color of the probe light” ([Claim 1h]), Petitioner does not adequately explain how Orametrix’s processor (e.g., data processor 952 (see Ex. 1005, 16:20, Figure 11 ( reproduced in § II.D.1)) is configured to “selectively switch” the encoding features so that the object is illuminated with different colors at different times as [Claim 1h] requires. Petitioner relies on Dr. Liang’s testimony as support for its contention that Orametrix teaches a processor configured to “change the color of projected encoding features” but the testimony simply repeats what is said in the Petition without any discussion of objective facts. Compare Pet. 28, with Ex. 1013 ¶ 100 (“the processor of Orametrix is already configured to change the color of projected encoding features, and is configured to introduce color information from photo data into the three-dimensional model”). The cited evidence does not adequately show that Orametrix’s processor “selectively switch[es]” the color of Orametrix’s digital image projection to illuminate an object with different colors at different times and thereby teach [Claim 1h]. We agree with Patent Owner that Orametrix does not teach a hardware processor “configured to: selectively switch a color of the probe light to illuminate the object with different colors at different times” ([Claim 1h]). Prelim. Resp. 19.” slip op. at 22
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot shown unpatentable
“A principal difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to transmitting a “probe light towards [an] object along an optical path thereby illuminating at least a part of the object with the time-varying illumination pattern” ([Claim 1c]) based on which, in part, a 3D geometry of at least a part of the surface of an object in an oral cavity is determined ([Claim 1 pre]). As Patent Owner points out, “[b]oth Orametrix and Faul disclose methodologies to process the obtained data and construct three-dimensional representations of the scanned object.” Prelim. Resp. 26 (citing Ex. 1005, 30:7–34:11, Ex. 1004, 13:28–16:6. We agree with Patent Owner that “Breton is silent on this aspect.” Id. Patent Owner quotes various passages from Breton to show that “[a]t best, Breton discusses two-dimensional mapping and measurement of tooth color for the purposes of ensuring the accurate color shade of replacement teeth.” Id. at 25–26 (quoting Ex. 1003, Abstract, 2:43-47, 2:60-64; also citing Title, 1:7– 18, 2:50–52, Figure 3). We agree that the cited passages do not provide adequate support for determining a 3D geometry as Petitioner has shown for Orametrix and Faul. For example, the passage at 2:43-47 discloses: “[a] general drawback of the prior art lies in that the notion of comparison between the measured tooth and a duplicate is limited to a single point to point comparison. Thus, area defects cannot be detected where no measurement has been taken.” Id. at 2:43-47. There is no mention or suggestion of determining a 3D geometry for a tooth. Another difficulty with Petitioner’s position is that Petitioner does not sufficiently explain why one of ordinary skill in the art would have configured the Orametrix and Faul processors as claimed given that, unlike Orametrix and Faul, Breton is not drawn to drawn to “[a] handheld intraoral scanner for determining the 3D geometry and color of at least a part of the surface of an object in an oral cavity” ([Claim 1 pre]). We agree with Patent Owner that Breton “is silent on this aspect.” Prelim. Resp. 27 (citing Ex. 1005, Figure 16; Ex. 1004, Abstract). “At most, Breton employs the use [of] square glass integrator rods, integrating spheres, optic fibers, and custom-made lenses.” Id. at 27 (citing Ex. 1003, 3:52–57, 11:35–38, 11:40-41, 11:47-49; referring to Figure 2 (“square glass integrator rods 20, 20”), Figure 4 (“integrating sphere 152”). “None of these light sources result in an ‘illumination pattern,’ much less a ‘time-varying illumination pattern.’” Id. Petitioner does not address these differences between the Breton apparatus and those of Orametrix and Faul. Petitioner does not explain why a person of ordinary skill in the art would have been led to modify Orametrix or Faul in light of Breton given these differences. Instead, to support its contention that a person of ordinary skill in the art “would understand that the processors described by Orametrix and Faul would be configured to implement the color changing scheme as taught by Breton,” Petitioner relies on Dr. Liang’s testimony. Pet. 28 (citing Ex. 1013 ¶ 100). But the testimony simply repeats what the Petition says without any discussion addressing the differences between the Breton apparatus and those of Orametrix and Faul. See Ex. 1013 ¶ 100. For the foregoing reasons, Petitioner provides insufficient reasoning with rational underpinnings in support of its contention that a person of ordinary skill in the art would have been motivated to modify Orametrix and Faul in view of Breton and thereby reach an intraoral scanner comprising [Claim 1h].” slip op. at 27
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’667 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 4–5 (citing Ex. 1013 ¶¶ 57–59). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision. C. Claim Construction” slip op. at 9
Claim construction§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,368,667 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 29, 2024 · IPR2023-01316 · APJ Hubert C Lorin · IPR · Institution
The Board denied institution on all challenged claims because the Petition did not show a reasonable likelihood of success on either §103 ground.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“In an [inter partes review], the petitioner has the burden from the onset to show with particularity why the patent it challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review petitions to identify “with particularity . . . the evidence that supports the grounds for the challenge to each claim”)). This burden of persuasion does not shift to Patent Owner, except in limited circumstances not present here. See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in inter partes review). B. Level of Ordinary Skill in the Art slip op. at 9
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not found
“Reason to combine In order to demonstrate obviousness, a petitioner must demonstrate that a skilled artisan would have had a reason to combine the teachings of the prior art in the manner claimed in the patent. KSR, 550 U.S. at 406 (2007). “To facilitate review, this analysis should be made explicit. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’).” Id. at 418.” slip op. at 26
- Skill levelSkill level petitioner adoptedOther
“Petitioner asserts that a person of ordinary skill in the art “[a]s of June of 2009, the priority date of the ’146 patent,” “would have had a bachelor’s degree in computer engineering, computer science, electrical engineering, physics, or an equivalent field, as well as at least one or two years of design experience, or alternatively, at least five years of comparable industry experience.” Pet. 5 (citing Ex. 1002 ¶¶ 51–53). Petitioner also asserts that a person of ordinary skill in the art “would have had experience with and knowledge of, 3D imaging systems and 3D modeling techniques.” Id. Patent Owner does not address Petitioner’s characterization of a person of ordinary skill in the art at this stage of the proceeding. See generally Prelim. Resp. Based on the record before us, we adopt Petitioner’s undisputed proposal as reasonable and consistent with the prior art and apply that definition for our analysis in this Decision.” slip op. at 9
§ 103 obviousnesscites KSR · GrahamPatents in suitUS 11,076,146 - Medit Corporation v. 3shape A/SInstitutedPTAB · Mar 28, 2024 · IPR2023-01315 · APJ James J Mayberry · IPR · Institution
The Board instituted review of claims 1, 2, 4, 5, 9, 10, and 12–17 on all asserted grounds because the Petition showed 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
“For institution, “[t]he ‘reasonable likelihood’ standard is a somewhat flexible standard that allows the Board room to exercise judgment.” Patent Trial and Appeal Board Consolidated Trial Practice Guide 53 (Nov. 2019), available at https://www.uspto.gov/TrialPracticeGuideConsolidated.” slip op. at 15
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“C. Claim Construction In inter partes reviews, we interpret a claim “using the same claim construction standard that would be used to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b). Under this standard, we construe the claim “in accordance with the ordinary and customary meaning of such claim as understood by one of ordinary skill in the art and the prosecution history pertaining to the patent.” Id.” slip op. at 16
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element) › Inherent disclosureInherency foundInstituted
“We understand Petitioner to rely on an inherent disclosure of the certainty score in contending that Korten anticipates claim 1. See, e.g., ABS Glob., Inc. v. Cytonome/St, LLC, 84 F.4th 1034, 1042–43 (Fed. Cir. 2023) (“A claim is anticipated if ‘each and every element as set forth in the claim is found, either expressly or inherently, in a single prior art reference.’” (emphasis added). And inherency is a high standard. See, e.g., Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. If, however, the disclosure is sufficient to show that the natural result flowing from the operation as taught would result in the performance of the questioned function, it seems to be well settled that the disclosure should be regarded as sufficient.”). We determine, on the limited record before us, that Petitioner has made a sufficient showing for institution that a certainty score would naturally flow from Korten’s validity and error determinations. Accordingly, upon review of the information in the Petition and corresponding evidence, including Patent Owner’s counter arguments, we determine Petitioner has sufficiently demonstrated, at this stage of the proceeding, that Korten discloses the subject matter of limitation 1[c].” slip op. at 24
- Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation not foundNot reached
“teachings of Korten with either Lehmann I or Lehmann II. Prelim. Resp. 22–26, 29 (referencing arguments for Ground 2), 35–36 (referencing arguments for Ground 2 directed to motivation to combine references). Patent Owner argues that, contrary to Petitioner’s assertion, the technology of Korten does not overlap with Lehmann II. Id. at 23. Specifically, Patent Owner argues that Petitioner and Dr. Foroosh fail to address how a person having ordinary skill in the art could have successfully combined the two-dimensional imaging of Lehmann II with the three-dimensional imaging of Korten. See id.; see, e.g., Pet. 31 (“Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models.”). Patent Owner argues that Petitioner should have been aware of this issue given the Board’s prior decision denying institution in IPR2023-00400. Prelim. Resp. 23. Patent Owner then itemizes a list of technical challenges with respect to combining a two-dimensional system with a three-dimensional system. Id. at 24. These challenges include that Petitioner does not explain “how one might associate a Z-coordinate of Korten with the color data obtained by the Lehmann II camera,” how a person having ordinary skill in the art “would have Korten’s processor align the [two-dimensional] color image areas obtained by the Lehmann II camera with the [three-dimensional] entity previously created by Korten, and then provide color values to the entity at aligned X-Y-Z points,” and “how to implement Lehmann II’s [two-dimensional] image into Korten’s [three-dimensional] model.” Id.; see also id. at 24–26 (discussing difficulties in using spectrophotometers to collect color data and associating two-dimensional color data with three-dimensional representations). Petitioner, concentrating on Lehmann II’s best fit technology, contends that “[a]lthough Lehmann II is directed towards the analysis of [two-dimensional] images, whereas Korten is directed towards rendering and displaying [three-dimensional] models, this difference is immaterial as it relates to determining the certainty score of the selected tooth shade value.” Pet. 31 (referencing Ex. 1015 ¶ 141); cf. Ex. 1015 ¶ 141 (providing the same testimony as is in the Petition). We have reviewed Patent Owner’s argument and determine, on the limited record before us, that Patent Owner identifies a weakness in Petitioner’s position. Petitioner’s contentions concerning motivation to combine Korten and Lehmann II seem to focus on a motivation for using Lehmann’s teachings of the subject matter of limitation 1[c], and does not address Petitioner’s reliance on Lehmann II for the subject matter of limitation 1[b], which recites the step of “determining a tooth shade value for at least one point on the tooth based on the texture data of the corresponding point of the digital 3D representation and on known texture values of one or more reference tooth shade values.” See Pet. 30 (mapping the requirements of limitation 1[b] to disclosures in Lehmann II); Ex. 1001, 21:33–37 (providing limitation 1[b]). Limitation 1[b] seems to require implementing teachings concerning two-dimensional color data from Lehmann II with three-dimensional color data collected at the step of limitation 1[a] by Korten’s system. As such, Petitioner’s reasoning may not be adequately supported by a rational underpinning. Cf. KSR Int’l Co., 550 U.S. at 418 (stating that, to facilitate the analysis of an obviousness position, the proponent should provide “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). The parties may develop the record concerning this dispute at trial.” slip op. at 30
Claim construction§ 102 anticipation§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,695,151 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 25, 2024 · IPR2023-01314 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood that any challenged claim was obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- Obviousness (§103) › Motivation to combine / reasonable expectation of successNot reached
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Nor is it clear from the record how defining a threshold distance in Newcombe teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images. Regarding Figure 6 of Newcombe, for instance, “only a single destination point is selected for each source point.” Ex. 1005, 8:22–23. According to Newcombe, if that single destination point is in space beyond the distance threshold, then it will be labeled as belonging to a moving object. See id. at 1:57–61, 8:42–48. Contrary to Petitioner’s position, Newcombe does not say that any point in space beyond the distance threshold will be labeled as belonging to a moving object. See Pet. 28.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’553 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 43–48.” slip op. at 30
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther
“Regarding the preambles of independent claims 1 and 22, as well as the claim term “excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation,” Petitioner asserts that it “applies the claim construction previously adopted by the district court in the co-pending litigation.” Pet. 9–10. Petitioner asserts that “the parties agreed that the preambles of independent claims 1 and 22 are limiting, and the district court adopted this construction in its order.” Id. at 9–10 (citing Ex. 1011, 2 (district court claim construction order)). Petitioner also asserts that “the district court adopted Patent Owner’s preferred construction of [‘excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation’]: ‘excluded volume in space that is common to both the first and second 3D representations where no surface from either of the 3D representations should be present.” Id. at 10 (citing Ex. 1011, 2). Patent Owner does not respond other than to repeat Petitioner’s assertions regarding the district court’s claim constructions. Prelim. Resp. 9. For purposes of this Decision, we conclude that no claim term requires express interpretation 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 9
Claim construction§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 10,064,553 - Medit Corporation v. 3shape A/SInstitution deniedPTAB · Mar 22, 2024 · IPR2023-01313 · APJ Michelle N Wormmeester · IPR · Institution
The Board denied institution because Petitioner did not show a reasonable likelihood of proving any challenged claim obvious over the asserted prior-art combinations.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable
“We agree with Patent Owner. Claim 1 requires “determining . . . a first excluded volume in space where no surface can be present in both the first 3D representation and the second 3D representation.” Petitioner contends that Newcombe’s “first compatibility test can be used to determine an excluded volume,” where “the first compatibility test relies on defining a threshold distance for a measurement between points in two 3D depth images – i.e., a ‘source point’ in a previous depth image and a ‘destination point’ in a current depth image.” Pet. 26. According to Petitioner, “by defining a distance threshold for the two three-dimensional depth images beyond which any point will be deemed an outlier, Newcombe teaches the determination of an excluded volume.” Id. at 28. Without more, Petitioner does not sufficiently explain how defining a threshold distance teaches determining a first excluded volume in space where no surface can be present in both the previous and current depth images.” slip op. at 17
- PTAB / AIA Trials › Discretionary denialNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33
- PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsNot reached
“IV. CONCLUSION For the foregoing reasons, Petitioner has not demonstrated on the record before us a reasonable likelihood that it would prevail in showing the unpatentability of any of the challenged claims of the ’551 patent.7 V. ORDER For the reasons given, it is ORDERED that the Petition is denied and no trial is instituted. 7 Because we deny the Petition on the merits, we do not reach Patent Owner’s request that we exercise our discretion to deny the Petition under 35 U.S.C. § 314(a) or 35 U.S.C. § 325(d). See Prelim. Resp. 46–51.” slip op. at 33
§ 103 obviousnessDiscretionary denialcites PhillipsPatents in suitUS 9,629,551 - PTAB · Mar 21, 2024 · IPR2024-00288 · APJ Thu A Dang · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–25 before institution, leaving no claim for consideration.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a]ctions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Patent Therefore, pursuant to our Rules, we construe this disclaimer as a request for adverse judgment, which we grant. II. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner under 37 C.F.R. § 42.73(b)(2).” slip op. at 2
NonePatents in suitUS 8,506,649 - Dell Inc. / Dell Technologies Inc. v. Softex LLCAdverse judgmentPTAB · Mar 19, 2024 · IPR2024-00564 · APJ Thu A Dang · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–25 before institution, leaving no claim for consideration.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a]ctions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the Owner’s disclaimer of claims 1–25 leaves no claim remaining in the trial. Therefore, pursuant to our Rules, we construe this disclaimer as a request for adverse judgment, which we grant.” slip op. at 2
- PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingNot reached
“Petition requesting an inter partes review of claims 1–25 (“the challenged claims”) of U.S. Patent No. 8,506,649 B2 (Ex. 1001, “the ’649 patent). Paper 2 (“Petition”). Along with the Petition, Petitioner filed a Motion for Joinder to inter partes review IPR2023-01185. Paper 3 (“Motion”).” slip op. at 2
NonePatents in suitUS 8,506,649 - Microsoft Corporation v. Softex` LLCAdverse judgmentPTAB · Mar 19, 2024 · IPR2023-01185 · APJ Thu A Dang · IPR · Adverse judgment
The Board granted Patent Owner’s request for adverse judgment after it disclaimed claims 1–25, leaving no claims for consideration.
RulingsAdverse judgment- Adverse judgmentAdverse judgmentGranted
“Our Rules provide that “[a]ctions construed to be a request for adverse judgment include: . . . [c]ancellation or disclaimer of a claim such that the Owner’s disclaimer of claims 1–25 leaves no claims remaining in the trial. Therefore, pursuant to our Rules, we construe this disclaimer as a request for adverse judgment, which we grant.” slip op. at 2
NonePatents in suitUS 8,506,649
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.