- Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 14, 2025 · IPR2023-01212 · APJ Sheila F Mcshane · IPR · Final written decision
Claims 1, 7, 9, 32, 38, and 40 are unpatentable as anticipated by Spain and obvious over Spain as evidenced by Agiwal.
RulingsFinal written decision- Skill levelSkill level petitioner adoptedDecided for petitioner
“III. ANALYSIS A. Level of Ordinary Skill in the Art Petitioner asserts that a person of ordinary skill in the art: would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems. That person would have at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 18 (citing Ex. 1008 ¶ 44). Patent Owner adopts Petitioner’s asserted level of ordinary skill in the art. PO Resp. 13. 1 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284, 287–88 (2011), amended 35 U.S.C. §§ 102, 103, effective March 16, 2013. Because the application and provisional application for the ’753 patent were filed before this date, the pre-AIA version of §§ 102, 103 apply. See Ex. 1001, codes (22), (60). Petitioner does not dispute that the filing date of the provisional application filing date applies. See Pet. 6; see generally Pet. Reply. 2 US 2003/0064735 A1, published April 3, 2003 (Ex. 1006). 3 Ankur Agiwal, LOCATOR – Location Estimation System For Wireless LANs, WMASH 2004: Proceedings of the Second ACM International Workshop on Wireless Mobile Applications and Services on WLAN Hotspots, 102–109 (2004) (Ex. 1005). For the purposes of this Decision, we adopt the assessment offered by Petitioner as it is consistent with the ’753 patent and the prior art before us. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001).” slip op. at 7
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“We agree with Petitioner that Patent Owner’s additional requirements of evaluating the calibration data to determine the boundaries of the area should not be included in the construction of “grid point.” Instead, based on the full record, and for the reasons explained below, we discern no reason to alter our prior construction in the Institution Decision of “grid point” as “a point associated with representative calibration data for an area.” Dec. 22– 23.” slip op. at 17
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“The evidence supports that Petitioner has sufficiently demonstrated that Spain teaches “generating one or more sets of grid points for said calibration data,” as recited in limitation [1.2]. Spain states that: In another embodiment, the database is built by taking fingerprint measurements at predetermined locations and using intelligent algorithms that interpolate the fingerprints at all locations in between the sampled locations. Ex. 1006 ¶ 101. Relevant to this disclosure, Mr. Williams testifies that “Spain discloses generation of sets of grid points wherein each set includes newly interpolated grid points” because “the two grid points used to interpolate an additional grid point or points and the generated additional grid point or points are collectively a generated ‘set’ of grid points (i.e., a ‘set’ which includes the two calibrated grid points and the associated interpolated grid points).” Ex. 1008 ¶¶ 76–77 (citing Ex. 1006 ¶¶ 54, 55, 101). It is not disputed that Spain’s “fingerprints” are calibration data having characterizing parameters, such as observed signal strength, observed at calibration points. See Ex. 1006 ¶ 35. We find that this evidence demonstrates that Spain discloses generating one or more grid points, where the grid points are associated with calibration data.10 Accordingly, the evidence provides support that Spain’s interpolation of fingerprints at different locations discloses generation of one or more sets of grid points, where the grid points are associated with calibration data. Spain also discloses that: . . . the fingerprint corresponds not to one exact spot on the surface of the earth, but instead to a small area. The Lat and Long fields in this embodiment indicate a position inside the area, preferably the center point.” slip op. at 33
- Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable
“2. Discussion Petitioner refers to Agiwal to note that, like Spain, “Agiwal discloses an initial approximate location-based search of its database using live measurement data transmitted from a mobile device.” Pet. 18. Petitioner, however, relies only on Spain for its obviousness assertions. Id. at 22–38. The above discussion and Petitioner’s showing related to anticipation by Spain also equally apply to the obviousness showing over Spain as presented by Petitioner. See Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983). Patent Owner presents no additional arguments specifically directed to Petitioner’s showing as to obviousness under Spain that we have not already addressed. See generally PO Resp. Patent Owner also presents no evidence of objective indicia of nonobviousness. See generally PO Resp. Weighing the record as a whole in view of the findings and analysis above, we conclude that Petitioner has met its burden to show, by a preponderance of the evidence, that claims 1, 7, 9, 32, 38, and 40 would have been obvious over Spain as evidenced by Agiwal.” slip op. at 43
Patent outcomesUS 8,406,753 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,406,753 - Google LLC v. Geoscope Technologies Pte. Ltd.All claims unpatentablePTAB · Feb 14, 2025 · IPR2023-01211 · APJ Brian D Range · IPR · Final written decision
Claims 4 and 26 are unpatentable: claim 4 is anticipated by Shkedi, and claims 4 and 26 are obvious over Zhu and Spain.
RulingsFinal written decision- Prior constructionPrior construction adoptedDecided for petitioner
“requirement of evaluating the calibration data to determine the boundaries of the area represented by a grid point should not be included in the construction of either “grid point” or “non-uniform grid point.” Instead, based on the full record, we discern no reason to alter our prior construction of “grid point” as “a point associated with representative calibration data for an area” and maintain that construction for this Final Written Decision. The construction of “grid point” we adopt is supported by the Specification of the ’494 patent. Namely, the ’494 patent discloses that “[i]n general, a non-uniform grid point (NUG) may represent the signal characteristics and/or calibration data over a given region,” and “NUGs represent an area of collected calibration data.”9 Ex. 1001, 3:58–4:2. The district court identified the second quoted passage, which is identically recited in the ’104 patent (see Ex. 1018, 3:50–60) as “provid[ing] a clear indication of the meaning of ‘grid point.’” Ex. 1028, 19 (emphasis added). We agree with the district court’s analysis. Although the ’494 patent does not explain how a generic “grid point” might differ from the described “nonuniform grid point,” we do not find this distinction pertinent to construing “grid point” in this case because neither party raises this issue. Also, based on the claim words “non-uniform grid point,” a “non-uniform grid point” is a type of grid point. Furthermore, the district court construed “grid point” only, not “non-uniform grid point.” Id. at 18–20.” slip op. at 19
- Skill levelSkill level petitioner adoptedDecided for petitioner
“at the time the application was filed, we consider the level of ordinary skill in the pertinent art at the critical time. Graham, 383 U.S. at 17. The resolution of this question is important because it allows us to “maintain[] objectivity in the obviousness inquiry.” Ryko Mfg. Co. v. Nu–Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991). In assessing 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) (quotation omitted). Generally, it is easier to establish obviousness under a higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated level of skill generally favors a determination of nonobviousness . . . while a higher level of skill favors the reverse.”). Petitioner contends that a person of ordinary skill in the art (POSITA) would have been someone knowledgeable in wireless networks, cellular radio systems, mobile communication devices and radio navigation systems, having at least a bachelor’s degree in electrical engineering, with a background in radio frequency communications and/or navigation system technology as well as approximately two years of industry experience working on radio communication and/or navigation systems. Pet. 13 (citing Ex. 1012 ¶ 30). Patent Owner does not dispute the level of ordinary skill in the art. PO Resp. 11–12. We adopt Petitioner’s proposal as reasonable and consistent with the ’494 patent specification and the prior art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (the prior art may reflect an appropriate level of skill in the art).” slip op. at 9
- Expert testimonyPetitioner expert creditedDecided for petitioner
“We also credit Mr. Williams’s testimony that determining which calibration data is representative of an area “would not require analysis” because “[i]t could be just the actual measurement,” and “analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:10–22. Patent Owner’s argument that this testimony is not instructive because Mr. Williams limited his responses to the construction of calibration data and avoided responding to the question asked is not persuasive. See Sur-reply 8–9. Although Mr. Williams did refer to “the calibration data construction” in his response, we disagree that he avoided responding to the question asked. He was asked: “To determine which of that calibration data is representative of an area would require analyzing that set of collected calibration data, right?” and directly responded: “It would not require analysis. It could be just the actual measurement.” Ex. 2023, 37:10–16. This testimony responded to the question asked. He then stated: “I believe that is an issue as part of the calibration data construction,” before concluding: “So analysis could be part of it, but it doesn’t have to be.” Ex. 2023, 37:17–22. Merely expressing a belief that the issue or question asked relates to the calibration data construction does not equate to his response being limited to the calibration data construction.” slip op. at 23
- Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable
“Thus, “grid points” and “calibration points” in the ’494 patent are distinct elements that can overlap. Specifically, a “grid point” is a point associated with representative calibration data for an area, and a “calibration point” is a point at which calibration data is collected. These points can occupy the same physical location (i.e., the same longitude/latitude coordinates) but still be a “grid point” and a “calibration point.” For these reasons, we are not persuaded that the overlap between “grid points” and “calibration points” in Shkedi undermines Petitioner’s position and evidentiary showing. Petitioner, thus, has established by a preponderance of the evidence that Shkedi teaches each element of claim 4 including non-uniform grid points. We determine that the preponderance of the evidence establishes that claim 4 is anticipated by Shkedi.” slip op. at 42
Patent outcomesUS 8,786,494 unpatentableClaim construction§ 102 anticipation§ 103 obviousnesscites KSR · GrahamPatents in suitUS 8,786,494 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01114 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of IPR challenging claims 2, 27–30, 32–36, 38, 40, 42–44, 46, 47, 52, 54, 57, and 59, exercising discretion because this was the fourth-ranked parallel petition.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. 10 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 24–41. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 7), yet Petitioner provides a five-page summary of the ’754 patent and its prosecution history (see id. at 2–6). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 7–19), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-00978 · APJ Bart A Gerstenblith · IPR · Institution
The Board instituted IPR on claims 1–17 on all petition grounds, finding a reasonable likelihood that Dolan renders at least one challenged claim obvious.
RulingsInstitution decision- PTAB / AIA Trials › Discretionary denial › Fintiv (parallel litigation)Denied
“letter stipulating that if the Board institutes this IPR petition on the grounds presented therein, then Samsung will not pursue in the above-captioned litigation any grounds that were raised or reasonably could have been raised in the IPR. For the sake of clarity, this stipulation does not extend to co-petitioner Google, which is not a party to the above-referenced litigation.” slip op. at 7
- PTAB / AIA Trials › Real party in interest / privityNot reached
“Electronics, America, Inc.; and Google LLC as real parties in interest. Pet. 61. Petitioner explains that “Google LLC is a subsidiary of XXVI Holdings Inc., which is a subsidiary of Alphabet Inc.” Id. at 61 n.10. Petitioner asserts that “XXVI Holdings Inc. and Alphabet Inc. are not real parties-in-interest to this proceeding.” Id. Patent Owner identifies Cerence Operating Co. and Cerence, Inc. as real parties in interest. Paper 5, 1. Patent Owner disagrees with Petitioner, contending Alphabet Inc. is also a real party in interest. Id. At this stage of the proceeding, we need not determine whether Alphabet Inc. is a real party in interest to Petitioner since neither Petitioner nor Patent Owner has identified any effect that determination would have on the outcome of this proceeding. To the extent Patent Owner seeks to maintain this contention, it should raise the issue in its Patent Owner response.” slip op. at 3
- Skill levelSkill level petitioner adoptedDecided for petitioner
“Patent Owner does not currently take a position on the relevant level of ordinary skill in the art, but believes that “the Board could assume Petitioner’s proposed level of ordinary skill for purposes of deciding whether to institute.” Prelim. Resp. 3. At this stage of the proceeding and on the present record, we adopt Petitioner’s uncontested, proposed level of ordinary skill in the art, which we find consistent with the level of ordinary skill in the art reflected by the ’078 patent and the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“An inter partes review may be instituted only if “the information presented in the petition . . . and any [preliminary] response . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons given below, on this record, Petitioner has established 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 of the Challenged Claims on all grounds raised in the Petition.” slip op. at 2
§ 103 obviousnessDiscretionary denialcites Phillips · KSR · GrahamPatents in suitUS 7,395,078 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01086 · APJ Juliet Mitchell Dirba · IPR · Institution
The Board denied institution of review of claims 2, 8, 10, 16, 24, 26, and 224 because this petition ranked last among seven parallel petitions.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherDenied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01118 · APJ Nathan A Engels · IPR · Institution
The Board denied institution of IPR2024-01118, finding seven parallel petitions unjustified and exercising discretion to deny this sixth-ranked petition.
RulingsInstitution decision- Parallel petitionsInstitution denied
“Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot 12 A petitioner is not entitled to an unlimited number of petitions (see Trial Practice Guide 59–61); instead, we determine whether the circumstances justify additional petitions (see id. at 59–60). This approach conforms with the rationale behind imposing a word count limit on petitions. See id. at 39 (discussing the reasons for establishing word count limits and urging parties to present “concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record.”). words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise. As a consequence, we reviewed the content of the common sections— i.e., the analysis of claim 2, the summary of the ’754 patent and prior art, the articulation of the level of skill in the art and claim construction, and the other preliminary comments—and we are not persuaded that they are sufficiently concise to support Petitioner’s argument. Claim 2 is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages. See Pet. 26–43. Petitioner provides no general information about the technology and submits that no claims need to be construed (id. at 8–9), yet Petitioner provides a six-page summary of the ’754 patent and its prosecution history (see id. at 3–8). Also, Petitioner provides a twelve-page summary of Ahn and Chaudhri (see id. at 9–21), despite the fact that neither reference is particularly long. Indeed, as Patent Owner notes, Petitioner was able to remove nearly 1,000 words from these common sections in at least one of the petitions. See Ranking Response 3–4. Because Petitioner’s analysis in the common sections does not appear to be concise, we are not persuaded that Petitioner’s use of approximately 8,350 words in those sections justifies the large number of petitions.” slip op. at 12
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01115 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and all grounds after finding a reasonable likelihood that Apple would prevail on at least one claim.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. We do not agree, however, that seven petitions are justified.8” slip op. at 11
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 16
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionNo construction neededOther
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent necessary to resolve the controversy) (citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)).” slip op. at 16
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01116 · APJ Sharon Fenick · IPR · Institution
The Board instituted IPR on all challenged claims and grounds, finding a reasonable likelihood of success for the Ahn and Chaudhri obviousness challenge.
RulingsInstitution decision- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition second on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),5 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of two petitions in this situation, and because this Petition is ranked second, we do not reproduce that analysis here.” slip op. at 6
- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“determine that Petitioner has sufficiently shown how Ahn teaches or suggests limitation 2.d of claim 2, and that the proposed combination of Ahn and Chaudhri teaches or suggests this limitation.” slip op. at 21
- Skill levelOther
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 6) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is considered by Petitioner to be “an advanced-level degree” we do not adopt years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner
“blur[ring] . . . at least a portion of” an object, as recited in independent claims 2 and 225, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 32–33 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those terms that are in controversy need be construed, and only to the extent slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754 - Apple Inc. v. Smith Interface Technologies, LLCInstitution deniedPTAB · Feb 13, 2025 · IPR2024-01117 · APJ Sharon Fenick · IPR · Institution
The Board discretionarily denied institution because this petition ranked fifth among seven parallel petitions challenging the patent.
RulingsInstitution decision- Parallel petitionsInstitution denied discretionary otherInstitution denied
“petition is warranted given the number of claims at issue. See Trial Practice Guide 59 (identifying situations where “two petitions . . . may be needed”). Patent Owner has asserted 166 claims in the co-pending district court litigation, and Petitioner challenges 91 unique claims in these petitions. See Ranking Notice 2; Ranking Response 2. Also, the vast majority of the challenged claims are asserted in litigation. See Ranking Response 2; Ex. 2004, 3. As a result, we agree that this is the type of “rare” situation where multiple parallel petitions are necessary. Petitioner’s primary argument is that seven petitions were required because the common sections needed to be repeated in each petition, which left few words for arguments directed to new claims (given word count limits). See Ranking Notice 2–3. But this argument is premised on an assumption that these common sections “require[d] approximately 8,350 words” (id. at 3), and Petitioner has not persuasively shown that so many words were actually required for these sections. Petitioner includes no explanation or justification of the length of the sections, but instead, it simply assumes that the words used were required. Having reviewed the analysis in those sections, we do not agree. In other words, although we agree that the common sections needed to be repeated in each petition (and that this reduced the number of words available for other analysis), we are not persuaded that the common sections required approximately 8,350 words. A petitioner is certainly entitled to allocate its words as it sees fit, and we typically have no reason to evaluate those strategic decisions; however, we agree with Patent Owner (see Ranking Response 3) that Petitioner cannot justify a large number of petitions by claiming that it needed additional words for its analysis (given the Board’s word count limits) unless Petitioner’s analysis was concise.” slip op. at 11
Discretionary denialPatents in suitUS 10,656,754 - PTAB · Feb 13, 2025 · IPR2024-01119 · APJ Nathan A Engels · IPR · Institution
The Board instituted review of claims 1, 2, and 208–216 on all grounds, finding a reasonable likelihood that claims 1 and 2 are unpatentable over Ahn, Chaudhri, and Shiplacoff.
RulingsInstitution decision- PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted
“Pursuant to 35 U.S.C. § 314(a), the Director may not authorize an inter partes review unless the information in the petition and preliminary response “shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons that follow, we institute an inter partes review as to the challenged claims of the ’754 patent on all grounds of unpatentability presented in the Petition.” slip op. at 2
- Parallel petitionsDecided for petitioner
“II. DISCRETIONARY DENIAL Petitioner, in its Ranking Notice, ranks this Petition first on its list of petitions filed challenging claims of the ’754 patent. Ranking Notice 1–2. Patent Owner agrees that “this may be one of the ‘rare’ situations that requires ‘two petitions.’” Ranking Response 1–2 (quoting PTAB Consolidated Trial Practice Guide (Nov. 2019) (“Trial Practice Guide”),6 59). Our complete analysis of this issue is provided in our decisions on institutions in other proceedings, such as IPR2024-01086. However, because Patent Owner does not argue against the institution of at least one petition in this situation, and because this Petition is ranked first, we do not reproduce that analysis here.” slip op. at 6
- Skill levelSkill level petitioner adoptedDecided for petitioner
“The portion of the definition proposed by the Petitioner requiring a bachelor’s degree in computer science, computer engineering, human-computer interaction, or a comparable field and at least two years of professional experience working with graphical user interfaces and applications for computers (Pet. 4) appears to be commensurate with the problems and solutions in the ’754 patent and prior art of record and is supported by declarant testimony. We adopt this as the definition of one of ordinary skill in the art for the purposes of this Decision. We note that since it is unclear whether the bachelor’s degree in the proposed definition is the portion of Petitioner’s proposed definition relating to the substitution of years of experience for “an advanced-level degree” at this time.” slip op. at 8
- Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner
“We note that Petitioner presents arguments and evidence regarding “blur[ring] . . . at least a portion of” an object, as recited in independent claims 1 and 2, and argues that displaying less detail in a portion of a background object because of the display of a semitransparent foreground object would have been “a type of blurring”. Pet. 26–27 (citing Ex. 1001, 99:51–53; Ex. 1004 ¶ 70; Ex. 1009, 3, 6; Ex. 1003 ¶ 93). Petitioner asserts that one of ordinary skill would have understood “blur” to mean “make or become unclear or less distinct” and that the ’754 patent, in a dependent claim, recites that a blur “includes changing a translucency” of an overlaying object. Id. (citing Ex. 1001, 99:51–53). Patent Owner does not address this contention. On the present record, Petitioner’s proposed construction appears correct and, for purposes of institution, we construe the blurring of an object as displaying that object with less detail. Otherwise, for institution and on the present record, we determine that none of the claim terms from the related litigation require construction, and neither do any other claim terms. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (only those” slip op. at 9
Claim construction§ 103 obviousnessDiscretionary denialcites KSR · GrahamPatents in suitUS 10,656,754
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.